SCOTUS Holds Cheerleading Uniform Design Is To Be Copyrightable

SCOTUS recently held that the design of a cheerleading uniform is eligible for copyright protection

In a landmark decision, the U.S. Supreme Court recently held that the design of a cheerleading uniform is eligible for copyright protection. As highlighted by the Court, its holding in Sitar Athletic° v. Varsity Brands “resolve[s] widespread disagreement over the proper test” for determining when “the design of a useful article is eligible for copyright protection.”

Facts of the Case

The Copyright Act of 1976 provides copyright protection for original works of art, but not for industrial designs. Under 17 U. S. C. $101, the “pictorial, graphic, or sculptural features” of the “design of a useful article” are eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Prior to the Court’s decision, the circuit courts of appeal could not agree what test should be used to analyze whether the designs on an article were separate from the functional aspects of the garment, known as “separability.”

Varsity Brands holds more than 200 copyright registrations for two-dimensional designs consisting of various lines, chevrons, and colorful shapes appearing on the surface of the cheerleading uniforms the company designs, makes and sells. Varsity Brands filed a copyright infringement suit against Star Athletica, which also markets cheerleading uniforms. The District Court granted summary judgment in favor of Star Athletica, ruling that the designs could not be conceptually or physically separated from the uniforms and were, therefore, ineligible for copyright protection. The Sixth Circuit reversed, holding that the graphics could be “identified separately” and were “capable of existing independently” of the uniforms under §101.

Court’s Decision

The Supreme Court upheld the Sixth Circuit’s decision. Under the Court’s two-part test to determine separability: “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 in some other medium if imagined separately from the useful article.”

When applying the above test to the uniforms at issue, the Court determined that the decorations were separable and, therefore, eligible for copyright protection. “First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities,” Justice Clarence Thomas explained. “Second, if those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under §101.” He further added: “Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uniform itself.”

While the Court’s decision established a bright line rule, Justice Thomas was careful to emphasize the limits of its holding. He wrote:

To be clear, the only feature of the cheerleading uniform eligible for a copyright, in this case, is the two-dimensional work of art…respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear. They may prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.

Implications for the Fashion Industry

The Court’s decision in Star Athletica v. Varsity Brands brings much-needed clarity for copyright holders. It may also help businesses battle counterfeiters and others that seek to copy their clothing designs. To take full benefit of the Court’s holding, fashion companies should assess, with counsel, whether to pursue copyright registrations for their two- or three-dimensional clothing surface designs.

Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.