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Supreme Court Defines Test for Copyright Eligibility of Useful Article Design Features

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Today, in Star Athletica, L.L.C. v. Varsity Brands, Inc. (previously discussed here), the Supreme Court resolved an issue that previously had been the subject of “widespread disagreement” in the federal courts—the proper test for determining when a feature incorporated into the design of a useful article is eligible for copyright protection.

The Copyright Act protects “original works of authorship,” which include “pictorial, graphic, and sculptural works,” and are further defined 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, including architectural plans.” “Useful articles”— articles with an “intrinsic utilitarian function”—are not eligible for copyright protection. Clothing typically falls under the useful article category.

When a pictorial, graphic, or sculptural work is incorporated into a “useful article”—such as where a sculpture is used as a lamp base—the Copyright Act protects that work only if it “can be identified separately from, and [is] capable of existing independently of, the utilitarian aspects of the article.”

Varsity Brands incorporates designs into cheerleading uniforms and registers copyrights in those designs. Varsity sued Star Athletica, a competing cheerleading uniform supplier, for copying five of Varsity’s designs. The District Court for the Western District of Tennessee entered summary judgment in favor of Star Athletica, holding that Varsity’s designs were not separable from the useful article, the uniform. The Sixth Circuit reversed and the Supreme Court affirmed, in an opinion by Justice Thomas, but only after establishing its new two-part test and determining that Varsity’s designs satisfied both prongs.

A design is separable from a useful article and therefore subject to 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 it is incorporated.”

This decision is noteworthy in at least three additional respects:

Recent Supreme Court intellectual property decisions often have been unanimous (see here, here, and here), but this decision came from a five-member majority, with Justice Ginsberg concurring and Justices Breyer and Kennedy dissenting.

This is the second “pro” intellectual property decision in as many days—the Court’s decision yesterday in SCA Hygiene Products v. First Quality Baby Products held that the affirmative defense of laches may not bar patent infringement damages within the 6-year statutory limitations period.

The decision relied on textualism to interpret the Copyright Act.  The Court has taken a textualist approach in other recent decisions, including Life Technologies v. Promega and Lexmark International v. Static Control Components.