U.S. Supreme Court Issues Test for Separability Under the Copyright Act

Posted by: Kelly A. Williams, shareholder at the Pittsburgh law firm of Picadio Sneath Miller & Norton, P.C.  Ms. Williams may be contacted at kwilliams@psmn.com or 412-288-4005.

Anna Wintour, the editor-in-chief of Vogue, has said, “You either know fashion or you don’t.”  I think it is safe to say that the courts are still struggling to understand fashion—at least the extent to which fashion is afforded potentially 100 years or more of protection under the Copyright Act.  Generally, “useful articles,” such as clothing are not eligible for copyright protection.  However, Congress affords limited protection for artistic elements in useful articles by providing that “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.”  17 U.S.C. § 101.  Simple right?

Not so simple.  The federal courts have struggled to create a uniform standard for applying this provision of the Copyright Act.  At least nine different approaches have developed in the courts over the years, and the issue has challenged courts and scholars alike.

Last month, the U.S. Supreme Court tried to provide clarity as to when artistic elements in clothing are deemed to be separable and potentially protected by copyright law.  In Star Athletica, L.L.C. v. Varsity Brands, Inc., Varsity Brands obtained or acquired more than 200 U.S. copyright registrations for two-dimensional designs appearing on the surface of their cheerleading uniforms and other garments.  These designs are primarily “combinations, positionings, and arrangements of elements” that include “chevrons . . . , lines, curves, stripes, angles, diagonals, inverted [chevrons], coloring, and shapes.”  Varsity Brands sued Star Athletica, a competitor, for infringing Varsity Brands’ copyrights for the following designs:

The U.S. Supreme Court granted certiorari to resolve the widespread disagreement over the proper test for implementing Section 101’s separate identification and independent-existence requirements. Justice Thomas, writing for the majority,  held that a feature incorporated into the design of a useful article is eligible for 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.

The court stated that the issue depends solely on statutory interpretation.  For the first part of the test, the court need only be able to look at the useful article and spot some two or three-dimensional element that appears to have pictorial, graphic or sculptural qualities.  For the second part of the test, the court must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article.  “The ultimate separability question, then, is whether the feature for which copyright protection is claimed would  have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.”

While the court has set forth a new, national standard for separability, the application of that standard is not necessarily clear. In other words, while we know “The Devil Wears Prada,” it is also clear that “The Devil Is in the Details” when it comes to actually determining if the new standard is met.[1] In this case, the majority of the court found that the arrangements of lines, chevrons, and colorful shapes appearing on the surface of Varsity Brands’ cheerleading uniforms were separable features of the design of those cheerleading uniforms.  For the majority, the decorations were features having pictorial, graphic or sculptural qualities.  Additionally, the court determined if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as “two-dimensional . . . works of . . . art.”  The court further determined that imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.  Accordingly, the court held that the decorations were separable from the uniforms.

However, presented with the same facts, the dissenting justices (Justice Bryer, with Justice Kennedy joining) disagreed, finding that in applying the new standard for separability, the Varsity Brands’ designs could not “be perceived as . . . two- or three-dimensional work[s] of art separate from the useful article.”  The dissent found that the design features in the uniforms were not capable of existing independently of the utilitarian aspect of the object to which they relate.  “Looking at all five of Varsity’s pictures, I do not see how one could conceptualize the design features in a way that does not picture, not just artistic designs, but dresses as well. . . . Varsity, then, seeks to do indirectly what it cannot do directly:  bring along the design and cut of the dresses by seeking to protect surface decorations whose ‘treatment and arrangement’ are coextensive with that design and cut.”  By way of contrasting example, Justice Bryer found the cat in each of the lamps below to be both physically and conceptually separate, meeting the test:

Thus, while the standard has been clarified, the lower courts will be tasked with applying the standard with little guidance on how to do so, which is likely to be challenging if the Star Athletica decision is any indication.  Moreover, the Supreme Court did not decide if the Varsity Brands’ designs at issue in Star Athletica were copyrightable—just whether they were separable.  The court explicitly stated that it expressed no opinion on whether the uniform designs were sufficiently original to qualify for copyright protection or whether any other prerequisite of a valid copyright had been satisfied.  Therefore, the lower court, on remand, will have to determine if Varsity Brands’ designs are original enough to warrant copyright protection.

For more information, including the different and interesting issue that Justice Ginsburg’s concurring opinion raises, see the full opinion of Star Athletica, L.L.C. v. Varsity Brands, Inc. at https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf.

[1] “The Devil Wears Prada” is a book written by Lauren Weisberger, a former personal assistant to Anna Wintour.  The character in the book and later in the successful movie based on the book, Miranda Priestly (played by Meryl Streep in the movie), is believed to be based upon Anna Wintour.

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