SCOTUS affirms that design features incorporated into clothing may be eligible for copyright protection

SCOTUS affirms that design features incorporated into clothing may be eligible for copyright protection

Star Athletica, L. L. C. v. Varsity Brands, Inc., 580 U. S. (2017)

Many may find it unfair that a software developer can, in most countries, acquire free and automatic copyright protection for life plus 50 years for a piece of software, but that a fashion designer is forced to obtain a costly registered design right, lasting only 15 years, to protect clothing. This Supreme Court of the US (“SCOTUS”) decision appears to reconcile this inconsistency.

In this 6-2 decision, SCOTUS affirmed the Court of Appeals for the Sixth Circuit (“CASC”) that designs in the cheerleading uniforms designed, made and sold by Varsity Brands, Inc., Varsity Spirit Corporation and Varsity Spirit Fashions & Supplies, Inc. (collectively, “Varsity”) were copyrightable material under section 101 of the Copyright Act of 1976.  [Pp. 3-17]


Varsity has more than 200 copyright registrations for two-dimensional designs that appear on the surface of its cheerleading uniforms. [P. 2] Varsity sued Star Athletica, L.L.C. (“Star Athletica”) for copyright infringement after it began marketing cheerleading uniforms that used Varsity’s designs. [P. 2]

On summary judgment, the US District Court for the Western District of Tennessee (“the District Court”) determined that copyright protection could not apply to Varsity’s designs because the designs could not be conceptually separated from the utilitarian aspects of the cheerleading uniforms. [P. 2] Varsity appealed to the CASC, which reversed the District Court’s judgment, finding Varsity’s designs copyrightable. [P. 2] Star Athletica sought judicial review at SCOTUS.

The main issue in this decision was determining whether the CASC was correct in finding that the graphics could be “identified separately” and were “capable of existing independently” of the uniforms under section 101. [P. 3]


Section 101 of the Copyright Act of 1976 states:

“Pictorial, graphic, and sculptural works” include 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. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; 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. [17 U.S. Code § 101]

At SCOTUS, the majority found 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.

A separability analysis was necessary, in which Varsity argued that the two-dimensional surface decorations would always be separable since they are “on a useful article” rather than being a “design of a useful article.” [P. 4] The copyright case of Mazer v. Stein, 347 U. S. 201, 214 (1954) had illustrated that deciding whether a feature of a useful article “can be identified separately from,” and is “capable of existing independently of,” the article’s “utilitarian aspects” is a matter of statutory interpretation. [P. 6]

In addition to section 101, SCOTUS considered section 113(a), [P. 8] which states:

Subject to the provisions of subsections (b) and (c) of this section, the exclusive right to reproduce a copyrighted pictorial, graphic, or sculptural work in copies under section 106 includes the right to reproduce the work in or on any kind of article, whether useful or otherwise. [17 U.S. Code § 113(a)]

This provision, in conjunction with section 101, shows that while a work of art on a useful article may be eligible for copyright protection, a copyright-protected work of art contains the right for reproduction on an article, such as a useful article, as well.

Finding the pictorial and graphic designs on the cheerleading uniforms to satisfy the separability test, SCOTUS affirmed the CASC’s ruling. [P. 17]

Concurrence: Justice Ginsburg

Justice Ginsburg agreed with the judgment, but not with the opinion. [P. 1, C] She suggested that the section 101 separability test was unwarranted because the designs at issue were not designs of useful articles, but instead were copyright-protected pictorial or graphic works reproduced on useful articles. [P. 1, C] In essence, Justice Ginsburg was of the opinion that Varsity’s reproduction of its copyright-protected graphics on the cheerleading uniforms was simply a valid operation of section 113(a). [P. 3, C]

Dissent: Justice Breyer joined by Justice Kennedy

The dissent opinion found the designs ineligible for copyright protection because if they were to be imaginatively removed from the clothing, they would form a picture of a cheerleading uniform. [P. 10, D] Star Athletica argued a similar point by stating that the designs would retain an outline of a cheerleading uniform if extracted from the useful article. This opinion greatly depended upon how art correlates to the shape of the medium it is affixed to. [P. 10, D] Justices Breyer and Kennedy said that Varsity would only have the right to prohibit the reproduction of the surface designs on a uniform or other medium of expression, and would not have the right to prohibit anyone from creating a cheerleading uniform that is identical in shape, cut or dimensions to the articles at issue. [P. 11, D]


A business seeking to protect its intellectual property will want the most protection that can be granted in the easiest manner possible. However, difficulties can arise when the law affords certain forms of protection to certain types of creations while the same types of protection are not allowed for other creations.

This decision provides a means for eliminating this imbalance, specifically in the copyright system. By allowing the pictorials and graphics on useful articles to be copyrighted, clothing and other designers may also be able to benefit from more enduring IP rights. Additionally, this decision illustrates that inventors seeking IP rights for useful articles should be cognizant of the fact that their useful articles may also be eligible for copyright protection if they meet the section 101 requirements.

Other jurisdictions, such as the United Kingdom, have also taken similar steps to provide slightly overlapping IP rights. While the UK provides protection for Registered Designs, it also provides an Unregistered Design Right, stemming from the Copyright, Designs and Patents Act 1988. This means that fashion and other designers are, at least initially, automatically granted 15 years of protection for free.