Supreme Court Clarifies Separability Analysis for Copyright Protection of Elements of Industrial Designs

In a second Intellectual-Property-related decision in as many days, the U.S. Supreme Court issued a long-awaited ruling on March 22, 2017, in Star Athletica, L.L.C. v. Varsity Brands, Inc. et al. (No. 15-866), confirming that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles, and clarifying the test for determining when such protection applies to works embodied in the configuration of a useful article.

The U.S. Copyright statute denies protection to useful articles generally, but expressly provides for protection of pictorial, graphic, and sculptural features of the design of a useful article if those features are separable from the article, namely if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. Analysis of the statute’s separate-identification and independent-existence requirements, however, has prompted commentators and lower courts to develop several different standards, which this decision now resolves.

The Court’s 6-2 decision found the separate-identification requirement to be met whenever a two- or three-dimensional feature with pictorial, graphic or sculptural qualities can be identified in the useful article To fulfill the independent-existence requirement, the feature must be capable of existing as its own pictorial, graphic, or sculptural work, once imagined apart from the useful article.

Justice Thomas, writing for the 6-justice majority (with Justices Breyer and Kennedy dissenting and Justice Ginsburg filing a concurring opinion), affirmed the lower court’s ruling that surface decorations on cheerleading uniforms were separable from the uniforms and therefore eligible for copyright protection. Rejecting the dissent’s logic that removing the decorations from the uniforms would merely replicate the functional uniforms themselves, the majority noted that just as two-dimensional fine art conforms to the shape of the canvas, two-dimensional applied art conforms to the contours of the article. The Court emphasized that protecting the surface designs would not render the underlying cheerleading uniform’s shape, cut, or dimensions eligible for copyright protection.

The majority focused the independent-existence inquiry only on the extracted features, and not on any aspects of the useful article remaining post-extraction. Because the Court found the imagined remainder need not be a fully functioning useful article at all, it abandoned the distinction between “physical” and “conceptual” separability adopted by some courts and commentators. The Court also rejected any need for additional tests to consider evidence of the feature’s marketability or the methodology or intent of the author. The majority opinion also clarified the need to conduct separability analysis even for a two-dimensional graphic design appearing on a useful article (as compared to the design of a useful article), rejecting arguments that such surface designs should be found inherently separable without a need for further analysis (as J. Ginsburg urged in her concurring opinion). Responding to assertions that finding surface decorations on the uniforms copyright protected was inconsistent with the intent of Congress, which had expressly refused to enact legislation to protect industrial designs, including clothing, the Court rejected any presumption against copyrightability or hostility toward the limited protections for designs embodied in useful articles that Congress chose to provide.

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