STAR ATHLETICA, L.L.C.
VARSITY BRANDS, INC., ET AL.
October 31, 2016
TO THE UNITED STATES COURT OF APPEALS FOR THE SIXTH CIRCUIT
The Copyright Act of 1976 makes "pictorial, graphic, or
sculptural features" of the "design of a useful
article" 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.
Respondents have more than 200 copyright registrations for
two-dimensional designs-consisting of various lines,
chevrons, and colorful shapes-appearing on the surface of the
cheerleading uniforms that they design, make, and sell. They
sued petitioner, who also markets cheerleading uniforms, for
copyright infringement. The District Court granted petitioner
summary judgment, holding that the designs could not be
conceptually or physically separated from the uniforms and
were therefore ineligible for copyright protection. In
reversing, the Sixth Circuit concluded that the graphics
could be "identified separately" and were
"capable of existing independently" of the uniforms
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. That test is satisfied
here. Pp. 3-17.
(a) Separability analysis is necessary in this case.
Respondents claim that two-dimensional surface decorations
are always separable, even without resorting to a §101
analysis, because they are "on a useful
article" rather than "designs of a useful
article." But this argu- ment is inconsistent with
§101's text. "[P]ictorial" and
"graphic" denote two-dimensional features such as
pictures, paintings, or drawings. Thus, by providing
protection for "pictorial, graphical, and sculptural
works" incorporated into the "design of a useful
article, " §101 necessarily contemplates that such
a design can include two-dimensional features. This Court
will not adjudicate in the first instance the
Government's distinct argument against applying
separability analysis, which was neither raised below nor
advanced here by any party. Pp. 4-6.
(b) Whether a feature incorporated into 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." Mazer v.
Stein, 347 U.S. 201, 214. Pp. 6-10.
(1) Section 101's separate-identification requirement is
met if the decisionmaker is able to look at the useful
article and spot some two-or three-dimensional element that
appears to have pictorial, graphic, or sculptural qualities.
To satisfy the independent-existence requirement, the feature
must be able to exist as its own pictorial, graphic, or
sculptural work once it is imagined apart from the useful
article. If the feature could not exist as a pictorial,
graphic, or sculptural work on its own, it is simply one of
the article's utilitarian aspects. And to qualify as a
pictorial, graphic, or sculptural work on its own, the
feature cannot be a useful article or "[a]n article that
is normally a part of a useful article, " §101.
Neither could one claim a copyright in a useful article by
creating a replica of it in another medium. Pp. 7-8.
(2) The statute as a whole confirms this interpretation.
Section 101, which protects art first fixed in the medium of
a useful article, is essentially the mirror image of
§113(a), which protects art first fixed in a medium
other than a useful article and subsequently applied to a
useful article. Together, these provisions make clear 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. P. 8.
(3) This interpretation is also consistent with the Copyright
Act's history. In Mazer, a case decided under
the 1909 Copyright Act, the Court held that respondents owned
a copyright in a statuette created for use as a lamp base. In
so holding, the Court approved a Copyright Office regulation
extending protection to works of art that might also serve a
useful purpose and held that it was irrelevant to the
copyright inquiry whether the statuette was initially created
as a freestanding sculpture or as a lamp base. Soon after,
the Copyright Office enacted a regulation implementing
Mazer's holding that anticipated the language of
§101, thereby introducing the modern separability test
to copyright law. Congress essentially lifted the language
from those post-Mazer regulations and placed it in
§101 of the 1976 Act. Pp. 8-10.
(c) Applying the proper test here, the surface decorations on
the cheerleading uniforms are separable and therefore
eligible for copyright protection. First, the decorations can
be identified as features having pictorial, graphic, or
sculptural qualities. Second, if those decorations were
separated from the uniforms and applied in another medium,
they would qualify as two-dimensional works of art under
§101. Imaginatively removing the decorations from the
uniforms and applying them in another medium also would not
replicate the uniform itself.
The dissent argues that the decorations are ineligible for
copyright protection because, when imaginatively extracted,
they form a picture of a cheerleading uniform. Petitioner
similarly claims that the decorations cannot be copyrighted
because, even when extracted from the useful article, they
retain the outline of a cheerleading uniform. But this is not
a bar to copyright. Just as two-dimensional fine art
correlates to the shape of the canvas on which it is painted,
two-dimensional applied art correlates to the contours of the
article on which it is applied. The only feature of
respondents' cheerleading uniform eligible for a
copyright is the two-dimensional applied art on the surface
of the uniforms. Respondents may prohibit the reproduction
only of the surface designs on a uniform or in any other
medium of expression. Respondents have no right to prevent
anyone from manufacturing a cheerleading uniform that is
identical in shape, cut, or dimensions to the uniforms at
issue here. Pp. 10-12.
(d) None of the objections raised by petitioner or the
Government is meritorious. Pp. 12-17.
(1) Petitioner and the Government focus on the relative
utility of the plain white uniform that would remain if the
designs were physically removed from the uniform. But the
separability inquiry focuses on the extracted feature and not
on any aspects of the useful article remaining after the
imaginary extraction. The statute does not require the
imagined remainder to be a fully functioning useful article
at all. Nor can an artistic feature that would be eligible
for copyright protection on its own lose that protection
simply because it was first created as a feature of the
design of a useful article, even if it makes that article
more useful. This has been the rule since Mazer, and
it is consistent with the statute's explicit protection
of "applied art." In rejecting petitioner's
view, the Court necessarily abandons the distinction between
"physical" and "conceptual" separability
adopted by some courts and commentators. Pp. 12-15.
(2) Petitioner also suggests incorporating two
"objective" com- ponents into the test-one
requiring consideration of evidence of the creator's
design methods, purposes, and reasons, and one looking to the
feature's marketability. The Court declines to
incorporate these components because neither is grounded in
the statute's text. Pp. 15-16.
(3) Finally, petitioner claims that protecting surface
decorations is inconsistent with Congress' intent to
entirely exclude industrial design from copyright. But
Congress has given limited copyright protection to certain
features of industrial design. Approaching the statute with
presumptive hostility toward protection for industrial design
would undermine that choice. In any event, the test adopted
here does not render the underlying uniform eligible for
copyright protection. Pp. 16-17.
68');">799 F.3d 468, affirmed.
THOMAS, J., delivered the opinion of the Court, in which
ROBERTS, C. J., and Alito, SOTOMAYOR, and KAGAN, JJ., joined.
GlNSBURG, J., filed an opinion concurring in the judgment.
BREYER, J., filed a dissenting opinion, in which KENNEDY, J.,
has provided copyright protection for original works of art,
but not for industrial designs. The line between art and
industrial design, however, is often difficult to draw. This
is particularly true when an industrial design incorporates
artistic elements. Congress has afforded limited protection
for these artistic elements 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.
granted certiorari to resolve widespread disagreement over
the proper test for implementing §101's
separate-identification and independent-existence
requirements. 578 U.S.__ (2016). We hold 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 protecta-
ble 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. Because that test is satisfied in this
case, we affirm.
Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity
Spirit Fashions & Supplies, Inc., design, make, and sell
cheerleading uniforms. Respondents have obtained or acquired
more than 200 U.S. copyright registrations for
two-dimensional designs appearing on the surface of their
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." App. 237. At issue in this case
are Designs 299A, 299B, 074, 078, and 0815. See Appendix,
Star Athletica, L. L. C, also markets and sells cheerleading
uniforms. Respondents sued petitioner for infringing their
copyrights in the five designs. The District Court entered
summary judgment for petitioner on respondents' copyright
claims on the ground that the designs did not qualify as
protectable pictorial, graphic, or sculptural works. It
reasoned that the designs served the useful, or
"utilitarian, " function of identifying the
garments as "cheerleading uniforms" and therefore
could not be "physically or conceptually" separated
under §101 "from the utilitarian function" of
the uniform. 2014 WL 819422, *8-*9 (WD Tenn., Mar. 1, 2014).
Court of Appeals for the Sixth Circuit reversed. 799 F.3d
468, 471 (2015). In its view, the "graphic designs"
were "separately identifiable" because the designs
"and a blank cheerleading uniform can appear 'side
by side'-one as a graphic design, and one as a
cheerleading uniform." Id., at 491 (quoting
Compendium of U.S. Copyright Office Practices §924.2(B)
(3d ed. 2014) (Compendium)). And it determined that the
designs were "'capable of existing
independently'" because they could be incorporated
onto the surface of different types of garments, or hung on
the wall and framed as art. 799 F.3d, at 491, 492.
McKeague dissented. He would have held that, because
"identifying the wearer as a cheerleader" is a
utilitarian function of a cheerleading uniform and the
surface designs were "integral to" achieving that
function, the designs were inseparable from the uniforms.
Id., at 495-496.
first element of a copyright-infringement claim is
"ownership of a valid copyright." Feist
Publications, Inc. v. Rural Telephone Service Co., 499
U.S. 340, 361 (1991). A valid copyright extends only to
copyrightable subject matter. See 4 M. Nimmer & D.
Nimmer, Copyright §13.01 [A] (2010) (Nimmer). The
Copyright Act of 1976 defines copyrightable subject matter as
"original works of authorship fixed in any tangible
medium of expression." 17 U.S.C. §102(a).
of authorship" include "pictorial, graphic, and
sculptural works, " § 102(a)(5), which the statute
defines to 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, " §101. And a work of
authorship is "'fixed' in a tangible medium of
expression when it[ is] embodi[ed] in a" "material
objec[t] . . . from which the work can be perceived,
reproduced, or otherwise communicated." Ibid,
(definitions of "fixed" and "copies").
Copyright Act also establishes a special rule for
copyrighting a pictorial, graphic, or sculptural work incor-
porated into a "useful article, " which is defined
as "an article having an intrinsic utilitarian function
that is not merely to portray the appearance of the article
or to convey information." Ibid. The statute
does not protect useful articles as such. Rather, "the
design of a useful article" is "considered a
pictorial, graphical, 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." Ibid.
the Copyright Office, and commentators have described the
analysis undertaken to determine whether a feature can be
separately identified from, and exist independently of, a
useful article as "separability." In this case, our
task is to determine whether the arrangements of lines,
chevrons, and colorful shapes appearing on the surface of
respondents' cheerleading uniforms are eligible for
copyright protection as separable features of the design of
those cheerleading uniforms.
initial matter, we must address whether separability analysis
is necessary in this case.
argue that "[s]eparability is only implicated when a
[pictorial, graphic, or sculptural] work is the 'design
of a useful article.'" Brief for Respondents 25.
They contend that the surface decorations in this case are
"two-dimensional graphic designs that appear on
useful articles, " but are not themselves designs
of useful articles. Id., at 52.
Consequently, the surface decorations are protected
two-dimensional works of graphic art without regard to any
separability analysis under §101. Ibid.; see 2
W. Patry, Copyright §3:151, p. 3-485 (2016) (Patry)
("Courts looking at two-dimensional design claims should
not apply the separability analysis regardless of the
three-dimensional form that design is embodied in").
Under this theory, two-dimensional artistic features on the
surface of useful articles are "inherently
separable." Brief for Respondents 26.
argument is inconsistent with the text of §101. The
statute requires separability analysis for any
"pictorial, graphic, or sculptural features"
incorporated into the "design of a useful article."
"Design" refers here to "the combination"
of "details" or "features" that "go
to make up" the useful article. 3 Oxford English
Dictionary 244 (def. 7, first listing) (1933) (OED).
Furthermore, the words "pictorial" and
"graphic" include, in this context, two-dimensional
features such as pictures, paintings, or drawings. See 4
id., at 359 (defining "[g]raphic" to mean
"[o]f or pertaining to drawing or painting"); 7
id., at 830 (defining "[p]ictorial" to
mean "of or pertaining to painting or drawing").
And the statute expressly defines "[p]ictorial,
graphical, and sculptural works" to include
"two-dimensional . . . works of. . . art."
§101. The statute thus provides that the "design of
a useful article" can include two-dimensional
"pictorial" and "graphic" features, and
separability analysis applies to those features just as it
does to three-dimensional "sculptural" features.
United States makes a related but distinct argument against
applying separability analysis in this case, which
respondents do not and have not advanced. As part of their
copyright registrations for the designs in this case,
respondents deposited with the Copyright Office drawings and
photographs depicting the designs incorporated onto
cheerleading uniforms. App. 213-219; Appendix,
infra. The Government argues that, assuming the
other statutory requirements were met, respondents obtained a
copyright in the deposited drawings and photographs and have
simply reproduced those copyrighted works on the surface of a
useful article, as they would have the exclusive right to do
under the Copyright Act. See Brief for United States as
Amicus Curiae 14-15, 17-22. Accordingly, the
Government urges, separability analysis is unnecessary on the
record in this case. We generally do not entertain arguments
that were not raised below and that are not advanced in this
Court by any party, Burwell v. Hobby Lobby Stores,
Inc., 573 U.S.__, __ (2014), ...