The decision in this case will clarify the conceptual separability test and could offer broader protection for useful articles.
The US Supreme Court granted certiorari on May 2 in Star Athletica, L.L.C. v. Varsity Brands, Inc.[1] The Court will consider the appropriate test for copyright protection of clothing and other useful articles. Section 101 of the Copyright Act of 1976 (Copyright Act) only allows copyright protection for design features of useful articles’ pictorial, graphic, or sculptural features and only if such features can be identified separately from, and are capable of existing independently of, the utilitarian aspects of an article.[2] If the utilitarian aspects of the article are not physically separable from the design aspects, the article is only eligible for copyright protection if the utilitarian and design elements are “conceptually separable.” Since the codification of this “conceptual separability” standard in the Copyright Act, US courts have struggled to determine how to define when design features exist independently from functional considerations and become subject to copyright protection. Circuit courts, the US Copyright Office, and academics have proposed at least nine different tests to analyze conceptual separability.[3]
Background
Varsity Brands sued Star Athletica in the US District Court for the Western District of Tennessee, claiming infringement of its copyright in certain of its cheerleading uniforms. Star Athletica responded that the uniforms were useful articles and therefore not copyrightable. The district court granted summary judgment for Star Athletica, holding that the designs at issue were functional because they identified the wearer as a cheerleader, reflecting the “core of the ideal—of ‘cheerleading-uniform-ness,’” and therefore were useful articles not entitled to protection.[4] The US Court of Appeals for the Sixth Circuit reversed, holding that the graphic features of Varsity’s designs were conceptually separatable from the utilitarian aspects of the cheerleading uniform.[5] In reaching this holding, the Sixth Circuit announced its own test for conceptual separability, which it summarized as follows: if the artistic feature and the useful article could exist side by side and be perceived as fully realized, separate works, the design is conceptually separate from the utilitarian aspects of the article. Star Athletica appealed, and the Supreme Court agreed to hear the conceptual separability question.
Above: Examples of Varsity Brands’ cheerleader uniform designs.
Different Tests for Conceptual Separability
Courts have long struggled to define “conceptual separability,” which the US Court of Appeals for the Fourth Circuit has described as a “metaphysical quandary.”[6] In contrast to the Sixth Circuit test articulated in the Star Athletica decision, the US Court of Appeals for the Seventh Circuit frames the question as whether the design elements reflect the designer's artistic judgment exercised independently of functional influences or the design reflects utilitarian pressures as well as aesthetic choices.[7] The US Court of Appeals for the Second Circuit adopted a process-based approach and explained that if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects are not conceptually separable from the utilitarian elements.[8] The US Court of Appeals for the Fifth Circuit focuses on whether an article would still be marketable even if it had no utilitarian use.[9] These various formulations reflect the underlying difficulty in evaluating whether and to what extent utilitarian concerns shape a particular design. Different approaches have created uncertainty in determining the scope of copyright protection for useful articles.
Separability, Fashion, and Design
Should the Court provide a single test for conceptual separability, the decision would affect the ability to use...
