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2-4-6-8, Let's Give A Cheer For Copyright: SCOTUS Holds Original Imprinted Designs On Functional Cheerleader Uniforms Are Protected By Copyright If "Separable"

By Barry Werbin
Herrick, Feinsten LLP

In Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), the Second Circuit held in a seminal decision that original artistic sculptural designs depicted on designer silver belt buckles were protectable by copyright notwithstanding the functionality of the buckles themselves, because the designs could be separated from the utilitarian function of the buckles.

It took 37 years for this issue to get to the Supreme Court, which has now held that "an artistic feature of a design of a useful article" -- in this case cheerleader uniforms-- "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 pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately form the useful article." Star Athletica , LLC. v. Varsity Brands, Inc., No. 15-866 (Sup. Ct. March 22, 2017).

The Court concluded that the chevrons, curves, stripes, angles, diagonals, colors and shapes covered by Copyright Office registrations and imprinted on Varsity Brand's cheerleader uniforms met this test.

So let's break down the test, which is a refinement of existing language in the Copyright Act ("the Act") that extends protection to "pictorial, graphic and sculptural works" that are "fixed" in any "tangible medium of expression." However, because the Act excludes from protection any "useful article," §101 provides a qualification that: "the design of a useful article ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."

While seemingly clear on its face, judges have struggled with these statutory concepts of a design's separability and existence independent from an article's otherwise utilitarian aspects. Some courts, for example, have distinguished between "physical" and "conceptual" separability, which the Supreme Court has now rejected because "physical" separability would require the useful article to remain useful after removal of the design features, whereas "separability does not require the underlying useful article to remain...." Interestingly, the U.S. Government noted in its brief that after removal of the design elements, the uniforms would remain as plain white uniforms and thus maintain their utilitarianism, a point the Court found unnecessary to address because the focus of the test is on the "extracted" design features and "not on any aspects of the useful article that remain after the imaginary extraction."

Star Athletica's argument that the Act only protects "solely artistic features" that have no effect on a useful article's utilitarian purpose was also rejected by the Court, because it would undermine copyright protection for "applied art," which, by definition, is artistic design applied to useful articles. Similarly, the Court emphasized that an artistic feature that in itself qualifies for copyright protection does not lose that protection when it is created to be applied to a useful article.
The more difficult question is what "existing independently" means in this context. The Court noted this more difficult aspect of the test in saying that the subject design feature "must be able to exist as its own pictorial, graphic, or sculptural work ... once it is imagined apart from the useful article," thus implicating "conceptual" separateness. In other words, the consideration would be whether the design is eligible for copyright protection as a "pictorial, graphic and sculptural work."

Significant reliance was placed on a 1954 decision of the Court in Mazer v. Stein, 347 U.S. 201 (1954), which was decided under the 1909 Copyright Act. Mazer involved protection for a lamp base that depicted a dancer, essentially a sculptural statuette. At the time, the Copyright Office had a regulation that extended protection to works of art that might also serve a useful purpose, which was cited in the Mazer opinion. The Mazer Court also had emphasized that it was irrelevant whether the statuette "initially was created as a freestanding sculpture or as a lamp base." In 1960, the Copyright Office incorporated these concepts in an amended regulation that introduced the concept of "separability," which was then included in the 1976 Act's definitions.

Here, the Court had little problem (with only Justice Breyer dissenting) applying its test to the surface designs on the cheerleader uniforms, finding they were readily identifiable as having pictorial, graphic or sculptural qualities, and that if separated from the utilitarian uniforms and applied in another context -- such as a "painter's canvas" -- they would constitute "two-dimensional ... works of art" under §101 of the Act. Justice Thomas noted in his majority opinion that even if the design elements fit the "contours" of the uniforms, as argued by Justice Breyer in dissent, that is not a bar to copyright because two-dimensional art often corresponds to the contours of its medium, such as a design etched or painted onto the surface of a guitar.

In a concurring opinion, Justice Ginsburg noted that Varsity Brands had used the same designs from the uniforms on other items of apparel, including tee-shirts and jackets, and that it was not necessary to expound on the separability doctrine because it was clear these designs were "themselves copyrightable pictorial or graphic works reproduced on useful articles." [Emphasis in original]

While agreeing with much of the Court's opinion, Justice Breyer felt that the designs themselves were not eligible for copyright protection because they could not be perceived as two- or three-dimensional works of art apart from the uniforms. His rationale would not extend protection to any design that would make the useful article non-functional if the design were removed from that article, or, if it would make it non-functional, could not be conceived of separately from the useful article without conjuring up the article itself. These concepts were rejected by the majority's opinion.

This author thinks that the majority opinion got this one right and calms the waters over the separability doctrine. Nevertheless, what constitutes an independently protectable "pictorial, graphic and sculptural work" will continue to present challenges. Yet as the level of originality required for copyright protection is "extremely low" and creativity only need be "minimal" under Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 345, 358, 562 (1991), the test should not be difficult to apply. Indeed, we see all manner of modern abstract art qualifying for copyright protection that may consist of little more than a few geometric shapes and colors. This is emphasized in the Copyright Office's Compendium of U.S. Copyright Office Practices, Third Edition, which observes in §308.2 that under Feist, "[e]ven a "slight amount" of creative expression will suffice."

Few would argue that an original Mondrian geometric painting was not worthy of copyright protection, but is it that much different from the chevrons and other elements found on the cheerleader uniforms? Mondrian.jpg


In another extension of Star Athletica's arguments, one could argue that the designs on the uniforms were associated with the teams that ordered them, thus rendering the designs functional as they merely represented the teams. Yet this logic would eviscerate copyright protection for all original team logos that constitute artistic designs, many of which are famous, such as the NY Yankees' "top hat" logo.

Yankees.pngIndeed, this was the subject of a 2012 Second Circuit decision addressing ownership of the copyright in this very logo. Buday v. New Yankees Partnership, 486 F. App'x 894 (2d Cir. 2012). The Yankees won... again.


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