On March 22, 2017, the Supreme Court decided Star Athletica, LLC v. Varsity Brands, Inc. ((Star Athletica, LLC. v. Varsity Brands., Inc., No. 15-866 (U.S. Mar. 22, 2017).)) The Court’s 6-2 majority held that the pictorial and graphic designs on Varsity Brands’ cheerleading uniforms were separable from the uniforms’ utilitarian functions, and therefore eligible for copyright protection. ((Id. at 10-11.)) While many commentators are touting this decision as a big win for the fashion industry, ((See, e.g., Laura Kees & Stephen Shaw, “Knock-offs” Beware: SCOTUS Makes a Fashion-Forward Decision, Lexology (Mar. 23, 2017), http://www.lexology.com/library/detail.aspx?g=85701421-0197-499e-a55b-7d822a81a32a; Patrick Hughes, Attorneys Cheer (And Jeer) High Court’s Cheerleading Outfit Copyright Holding, Thomson Reuters: Legal Solutions Blog (Mar. 23, 2017), http://blog.legalsolutions.thomsonreuters.com/current-awareness-2/attorneys-cheer-and-jeer-high-courts-cheerleading-outfit-copyright-holding/.)) the Court’s holding in Star Athletica does little to expand copyright protection for fashion designers. ((Steff Yotka, What the Supreme Court’s First Ruling on Fashion Copyrights Means for the Runway, Vogue (Mar. 23, 2017), http://www.vogue.com/article/supreme-court-star-athletica-varsity-brands-ruling-fashion-industry.))
The Copyright Act of 1976 provides copyright protection to owners of “original works of authorship fixed in any tangible medium of expression [such as] pictorial, graphic, and sculptural works.” ((17 U.S.C. § 102(a)(5).)) The statute goes on to define pictorial, graphic, and sculptural works as “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings.” ((17 U.S.C. § 101.)) The statute’s definition of pictorial, graphic, and sculptural works (hereinafter “PGS works”), however, also includes a special limitation for PGS works that qualify as “useful articles” or “article[s] having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. ((Id.)) The Act’s limitation for useful articles states that PGS works displayed on or incorporated in useful articles only receive copyright protection if their features can “be identified separately from, and are capable of existing independently of, the utilitarian aspect of the [useful] article.” ((Id.))
Courts, the Copyright Office, and commentators have struggled to apply the “separability” test the statute requires. ((Varsity Brands, slip op. at 4; see also Jacqueline Lefebvre, Note, The Need for “Supreme” Clarity: Clothing, Copyright, and Conceptual Separability, 27 Fordham Intell. Prop. Media & Ent. L.J. 143, 147 (2016).)) In his dissenting opinion in the 6th Circuit’s review of the Varsity Brands dispute, Judge McKeague explains, “the law in this area is a mess—and it has been for a long time.” ((Varsity Brands, Inc.. v. Star Athletica, LLC, 799 F.3d 468,496-97 (6th Cir. 2015) (McKeague, J., dissenting).)) In fact, the confusion over separability has resulted in at least ten different application and formations of a “separability test” to help differentiate when a PGS work’s aesthetic value exists separately from the utilitarian functions of a useful article. ((Id. at 481-85; see also supra note 9, at 155-64.))
The Supreme Court granted certiorari to Varsity Brands to help clarify and establish the correct separability test to apply. ((Varsity Brands, slip op. at 1.)) The Court did not grant certiorari to fix a perceived issue with the limited copyright protection afforded to fashion designers.
With this fact in mind, the Court’s holding in Varsity Brands is unsurprising. The Court simply streamlines and simplifies the ten versions of the separability test applied in the lower courts to create a unified, two-step separability test. ((Varsity Brands, slip op. at 7-11.)) This test requires courts to determine if a PGS 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. ((Id.)) Notably, the Court rejects a physical separability requirement that would require both the original useful article and the PGS designs on it to standalone or remain useful after conceptual separation occurs. ((Id. at 12-15.))
The separability test the Court ultimately creates requires a case-by-case analysis without creating a bright line rule for when PGS works will be considered separate from the useful articles they appear on. In other words, the Court’s holding clarifies the correct separability test without greatly expanding or limiting the lower courts’ separability tests’ historic usages. Today, PGS works appearing on useful fashionable objects may or may not be protected by copyright depending on the PGS works’ ability to survive a separability test. The useful attributes of clothes—shape, cut, dimension, fabric, and etc.—continue to be unprotected by copyright. ((Varsity Brands, slip op. at 12.))
While fashion designers may let out a sigh of relief that their copyright protection rights were not lessened, Varsity Brands does little to protect their designs’ cuts, shape, or other utilitarian functions of clothing. The Court’s holding in Varsity Brands still requires designers to guess how a court will rule on each PGS attribute of every useful clothing article they create.
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