The overall design (such as the shape and cut) of a garment, bag or shoe is not protectable under current U.S. Copyright law because such items are considered “useful articles.” However, Section 101 of the Copyright Act provides protection for the “pictorial, graphic or sculptural features [of a useful article] that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.”[1]
In the fashion world, this provision of the Copyright Act allows companies to protect original pictorial, graphic or sculptural features that are applied to garments, bags and other accessories. Examples include: fabric designs like a floral pattern; graphic art like an artistic rendition of a snake or tiger; and sculptural 3-D hardware adornments like belt buckles or buttons. Copyright protection only covers the artwork itself, not the overall configuration of the garment or other product to which it is applied.[2]
For decades, courts and commentators have struggled to fashion a suitable test to determine when a pictorial, graphic or sculptural feature of a useful article (such as a garment) is protectable under § 101 of the U.S. Copyright Act. On March 22, 2017, in a 6-2 decision written by Justice Thomas, the Supreme Court provided long-awaited clarification. Much to the relief of the fashion industry, the Court adopted a test that preserves copyright protection for applied art to apparel and fashion accessories.
In Star Athletica, LLC vs. Varsity Brands, Inc., 580 U.S. ____ (2017), the Supreme 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 is incorporated.[3]
The Supreme Court found that the test was satisfied in Star Athletica, and affirmed the 6th Circuit’s holding that the two-dimensional graphic features applied to Varsity’s cheerleading uniforms were eligible for protection under the Copyright Act. [4]
Facts and Procedural Background
Star Athletica, LLC v. Varsity Brands, Inc. involved a dispute between two companies that sell cheerleading uniforms. Varsity Brands, Inc. (“Varsity”) designs, manufactures, and sells athletic apparel and accessories, including cheerleading uniforms. Varsity employs a design team that creates various two-dimensional designs, some of which are later incorporated onto the three dimensional surface of cheerleading uniforms. Varsity was granted U.S. copyright registrations for two dimensional artwork designs shown as depicted on the surface of cheerleading uniforms. Varsity submitted the images below[5] as the deposit copies during the copyright registration process:
Star Athletica, LLC (“Star Athletica”) also markets and sells cheerleading uniforms and accessories. Varsity filed suit after it discovered Star Athletica’s marketing materials were advertising cheerleading uniforms very similar to Varsity’s copyrighted designs. Varsity brought federal claims for copyright and trademark infringement against Star Athletica, together with a number of state claims including unfair competition.
Both parties cross-moved for summary judgment. In 2014, the U.S. District Court for the Western District of Tennessee granted partial summary judgment in favor of Star Athletica and dismissed Varsity’s copyright infringement claims. The District Court found that it could not conceptually separate the design features at issue—the colors-and-design components of a cheerleading uniform—from the utilitarian object that is a cheerleading uniform. As such, it held the designs were not eligible for copyright protection. Specifically, the District Court found that “a cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design...
