Supreme Court Uses its Imagination and Holds that Designs on Cheerleading Uniforms are Eligible for Copyright Protection

Authors: Scott Lydon and Christopher Messina.

In a 6-2 decision with Justice Thomas delivering the majority opinion, the Supreme Court held in Star Athletica LLC v. Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., No. 15-866 that “pictorial, graphic, or sculptural features” as defined in 17 U.S.C. § 101 are 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.

Because Varsity Brands’ uniform decoration designs would qualify as two-dimensional works of art if conceptually separated from the uniform and applied in another medium, such a painter’s canvas, they are protectable by copyright. Accordingly, while industrial designs, the uniforms themselves or other utility focused articles, like shovels, are not eligible for copyright protection—the combination, positioning and arrangement of the surface decorations, including chevrons, lines curves, stripes, angles, diagonals, inverted chevrons, coloring and shapes, satisfy the above eligibility test for copyright protection. The majority opinion also distinguished the protectable designs from the non-protectable shape, cut, and dimensions of a cheerleading uniform.

In concurring in the judgement but not the opinion, Justice Ginsburg held that the designs at issue are not designs of useful articles but rather copyrightable pictorial or graphic works reproduced on useful articles.

In dissent, Justice Breyer, joined by Justice Kennedy, expressed that Varsity Brands’ designs cannot be perceived as two- or three-dimensional works of art separate from the useful cheerleader uniform because the design elements make up the shape of the uniform. For articles where the form and function are inseparable, a design patent, and not copyright, would be a more appropriate means of protection.

A key takeaway from this case is that designs incorporated into useful articles can qualify for copyright protection. This may result in increased efforts to seek copyright protection for designs in the fashion and apparel industry.