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  • Writer's pictureRosie Burbidge

Copyright, fashion and the USA

Updated: Nov 26, 2023

Star Athletica v Varsity Brands sent shockwaves through the fashion and copyright worlds but is it the game changing decision some have suggested?

The Supreme Court decision is not about whether the cheerleader uniforms met the requisite level of creativity to qualify for protection as copyright works (although both majority opinions did note that the level of creativity required is "extremely low" following Feist).

Instead, this case was concerned with art as it is applied to functional (or "useful") items be that a cheerleader's outfit, a lamp or anything in between. More specifically it was about the circumstances in which it is possible to separate the artistic work from the functional item and the method for doing so.

The copyright works

Why is this an issue for fashion?

§101 of the US Copyright Act defines “Pictorial, graphic, and sculptural works” as including:

two-dimensional and three-dimensional works of fine, graphic, and applied art... the design of a useful article, as defined in this section, 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 (emphasis added).

Star Atheltica argued that the five designs in issue served the useful function of identifying the garments as cheerleading uniforms and therefore they could not be physically or conceptually separated from the cheerleading uniforms.

Is it necessary to consider separation at all?

Varsity Brands' primary argument was that the copyright works in issue are two dimensional graphic designs which appear on useful articles but are not themselves designs of useful articles. The above images depict the registered copyright works. They were all created before the cheerleading uniforms rather than taken from the uniforms after creation. Therefore, they said, it is not necessary to consider whether the artistic work can be separated from or exist independently of the cheerleading uniform because the designs in issue are not for a useful article.

The Supreme Court disagreed. Because the designs were incorporated into the design of a useful article and §101 explicitly provides for two dimensional items being part of a useful article, this must be the sort of issue that congress had in mind when drafting the section. Therefore, the majority held that the separability analysis applies in this instance.

Ginsburg J disagreed with this analysis and noted that because the designs were created before they were applied, "the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles" (emphasis in original). Therefore, in her view, the separability analysis is not necessary at all.

What is the separability test?

The separability test consists of two requirements (as set out in the statute):

  1. separate identification - this was considered to be "not onerous" as anyone can look at a useful article and identify some 2D or 3D component which has PGS qualities (i.e. pictorial, graphic or sculptural qualities);

  2. independent existence - is usually "more difficult to satisfy".

This requires that the PGS work must be able to exist alone once it is separated from the useful article.

The key authority in this decision was able to shed some light on this issue. Mazer v Stein, 347 US 201, 214 (1954) concerns the protection of lamps. More specifically it answered the question as to whether a statuette which was intended for use as a lamp base could be protected by copyright.

Mazer held that: (i) copyright subsisted in the statuette even though it was intended for use as a lamp base; and (ii) it was irrelevant whether the statuette was initially created as a freestanding sculpture or as a lamp base.

Therefore, Mazer said that "if a design would have been copyrightable as a standalone pictorial, graphic or sculptural work, it is copyrightable if created first as part of a useful article". The Supreme Court traced the origins of §101 to Mazer and consequently interpreted §101 in line with Mazer.

They summarised the test as:

"[A] feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium."

When applying this test to the cheerleading uniforms in issue they found that:

  1. the surface decorations on the uniforms could be identified as features having pictorial, graphic or sculptural qualities;

  2. the arrangement of colours and chevrons etc could be separated from the uniform and applied to another medium e.g. a painting;

  3. removing the surface decorations from the uniforms would not replicate the uniforms themselves.

Why was the Supreme Court divided?

This was not an unanimous decision. The court was split 6-2 with Breyer J and Kennedy J dissenting. The court's opinion was divided on the following key issues.

SeparabilityThe dissent argued that removing the designs from the cheerleading uniforms and placing them in some other medium, e.g. a canvas, would create "pictures of cheerleader uniforms". In other words, even when the surface decoration is extracted, you cannot entirely remove the useful article (the uniform).

The majority noted that two-dimensional applied art inevitably correlates to the medium on which it is recorded and it would be ludicrous for a fresco, ceiling panel or dome to lose copyright protection simply because they are designed to track the dimensions of the surface on which is is painted.

Moving from fine art to a more popular realm, the justices applied the same reasoning to painted guitars being replicated on album covers. They noted that it would create an anomaly if they (a) deny copyright protection to art that was first applied to a useful object whilst (b) allowing art which was later applied to a useful object to be protected.

The dissent allowed that a work of art printed on a T-shirt could be protected. The majority noted that there is no material difference between a T-shirt and the uniforms. They were clear that this decision does not give anyone the right to prevent the manufacture of cheerleading uniforms of the same shape, cut or dimensions.

Physical vs conceptual separability

One of the arguments around separability focused on whether it was necessary for the original item to remain as useful after the artistic work is removed. In this instance, the dissent considered that the designs were necessary to identify the wearer as a cheerleader. If the surface decoration it would simply be a plain white outfit rather than a cheerleading uniform.

The majority gave this argument short shrift. They noted that it you took the lamp in Mazer and removed the statuette you would be left with a shade, bulb and wires - i.e. it would not be equally useful after removal. Importantly, "the statute does not require that we imagine a non-artistic replacement for the removed feature to determine whether that feature is capable of independent existence" (emphasis in original).

As a result of their analysis, the court "necessarily abandon[ed] the distinction between 'physical' and 'conceptual' separability which some courts and commentators have adopted". The justices were very clear that because the statute does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary. The only relevant question for separability is: can the artistic work be conceptually separated from the useful article?

Artistic judgment and marketability

There was an argument that the test for identifying an artistic work should include two objective components:

  1. Do the design elements reflect the designer's artistic judgment?

  2. Would the artistic feature be marketable to a significant segment of the community without its utilitarian function?

As neither test has any basis in the US Copyright Act, both tests were rejected. Adding market surveys into the copyright process did not sound like a good idea to the justices as it "threatens to prize popular art over other forms or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act".

The exclusion of industrial design

There has been a long history of the fashion industry trying to get protection for clothing as a specific useful article (in a similar way that semiconductor chips and boat hulls have been protected).

Because congress has declined to specifically protect clothing as copyright (and left it to be covered by design patents), Star Athletica argued that there was a "presumption against copyrightability"

The majority noted that (i) "congressional inaction lacks persuasive significance", (ii) design patents and copyright are not mutually exclusive; and (iii) the test formulated by the Supreme Court would not protect the physical garments including their shape, cut and dimensions but only the surface decoration applied to those uniforms.

Although the ultimate decision on infringement could still go in Star Athletica's favour, the basic principle from this decision (i.e. that art can be protected as a copyright work if it can be conceptually separated from a utilitarian object) seems perfectly reasonable to me. Whether this will make a tremendous change to industry remains to be seen.

To find out more about the issues raised in this blog contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London -

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