Give Me a ©! Supreme Court Examines Cheerleader Uniforms and Gives Designers a Means to Protect Their Creations

Joel R. Leeman

By Joel Leeman. A member of our Litigation Practice Group

April 2017 IP Update

It’s not surprising that people who wear plain black robes all day rarely discuss clothing design.  What, then, prompted the Supreme Court justices to consider whether the arrangements of stripes, chevrons and color blocks on cheerleader uniforms are protectable by copyright?  The main reason is that the lower courts had disagreed on the correct test for determining when a graphic feature qualifies as copyrightable subject matter.  In any event, the high court’s decision should be a boon to the fashion and design industries.

We usually associate copyright with creative literary and artistic works. By contrast, industrial designs are not broadly covered by the copyright statute, primarily because such designs are governed by utilitarian considerations, not by the aesthetic concerns that are the province of copyright law.  Thus, a cheerleader’s uniform, apart from any decorative elements, is considered functional and cannot be copyrighted.

Artistic vs. Utilitarian

Those decorative elements, however, were precisely the focus of the dispute that reached the Supreme Court. In Star Athletica v. Varsity Brands, the court relied on a reading of the copyright statute so straightforward that it’s a wonder other courts hadn’t come up with it themselves.

Justice Thomas wrote that a feature incorporated into 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 graphic 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.

These can be called the separability and independent-existence requirements. The first, which the court said is usually easy to satisfy, involves finding elements that have “pictorial, graphic or sculptural” qualities, to quote the statutory language. The independent-existence prong necessitates concluding that the separately identified features can exist apart from the utilitarian aspects of the article in question.

Look at the two images below, which are typical of the five designs that Varsity Brands charged Star with unlawfully copying.

Applying its two-part test, the court concluded that the arrangements of colors and shapes are (1) separable from the uniforms, and (2) could be imagined in another medium, say, on a painter’s canvas.

The statute requires only that the combination of stripes, chevrons and piping qualify as a non-useful, and therefore copyrightable, graphic work on its own. In short, copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as free-standing art or–as with the cheerleader uniforms–as design features of useful articles.

Other tests of copyrightability miss the mark

In crafting its simple-seeming test, the court rejected other interpretations of the statute that had gained a limited following.  For example, some courts had ruled that the “separability” criterion required physical separability. This view would have doomed Varsity’s case, since if you literally removed the design elements, it would shred the cheerleader uniform, proving that the design is in fact inseparable from the useful article. (This would not be the case if the design appeared, say, on a small banner pinned to the uniform.)  Instead, the court required only conceptual separability–that the design features can be imagined separately from the uniform.

Also rejected was the marketability test, which considers whether a significant segment of the community would want to buy the design for its aesthetic qualities, even without any functional utility.  The snobbish appeal of this approach was lost on the court.  Justice Thomas opined that this standard for copyrightability “threatens to prize popular art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act.”

This observation provides a useful reminder that a work needs to meet only minimal standards of originality in order to qualify for copyright protection. Do cheerleader uniform designs achieve that minimal standard?  Varsity Brands’s victory is not in fact complete because the court ruled only that such designs are eligible for copyright.  However, the case was kicked back to the trial court for a determination whether the specific designs are original enough to be copyrightable.

Dissenters fret that competition will suffer

Justice Breyer filed a dissent, which Justice Kennedy joined.  He endorsed the majority’s analytic approach, but reached an opposite conclusion–that Varsity’s designs fail the copyrightability test.  When he imagined the designs by themselves, they did not simply depict designs; they depicted a cheerleading uniform, and were therefore not capable of existing independently of the utilitarian aspect of a cheerleading uniform.

Weighing in on the originality question, Justice Breyer faulted Varsity Brands for seeking copyright protection for an arrangement of design elements that would not be protected by copyright were they not on a useful article, as simple chevrons and stripes are “plainly unoriginal.”  The dissent worried that the majority decision enables Varsity to prevent its competitors from making useful articles, namely, uniforms.

Designers’ gain = Copycats’ loss

Whether it’s a lampstand bearing a design of a dancer, a sofa with an image of a lion, or a cheerleader uniform featuring a creative arrangement of dots and stripes, copyright owners can rely on the court’s decision to prevent reproduction of their designs not only on similar useful articles but in any other visual medium.  The legal protection does not of course extend to preventing someone from making the useful article itself devoid of the proprietary design features.

Since Congress has never made good on periodic proposals to protect fashion design, the Varsity Brands decision may give original designers some ammunition against ubiquitous knock-off artists, at least for those design elements that can be imagined in another tangible medium.

The decision raises the possibility that fashion designers can gain copyrights for arrangements of dots, paisleys, tartans, stripes and other elements that had traditionally been thought to be unprotectable. At the very least, the new zone of uncertainty can be exploited by deep-pocketed fashion houses to threaten supposed copyists with litigation.

At oral argument last October, Justice Sotomayor astutely sized up the stakes of this battle: “You’re killing knock-offs… with copyright,” she said of Varsity’s legal position. “You haven’t been able to do it with trademark law. You haven’t been able to do it with patent designs. We are now going to use copyright law to kill the knock-off industry. I don’t know that that’s bad. I’m just saying.”

And so it shall be.  Look for copyright law as the shiny new weapon in designers’ eternal battle against counterfeiters and copycats.