April 3, 2017

Supreme Court Broadens Copyright Eligibility For Design Elements, Including Artwork On Clothing

In Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. ___ (2017), the Supreme Court clarified the test for whether artistic features of a useful article are separable and therefore copyright eligible. The copyright statute offers protection to pictorial, graphic, and sculptural works including “useful articles” if those articles incorporate features that “can be identified separately from, and are capable of existing independently of” the article’s useful aspects. Before the decision, circuit courts and the Copyright Office had taken different approaches to separability. The Supreme Court’s test focuses on the artistic features and asks whether they can be perceived as a separate work of art that would qualify for protection if it appeared on its own or in a different medium. The Court made clear that the test is objective, and thus does not depend on factors some courts have applied, such as the designer’s intent or whether the work is marketable. The Court did not address other issues related to copyright, including originality or substantial similarity.

Goodwin represented respondent Varsity Brands, Inc., which prevailed in the Supreme Court.

Factual and Procedural History

Varsity Brands sued Star Athletica for infringing five registered graphic designs that are incorporated on cheerleading uniforms and other garments. The designs consist of arrangements of chevrons, curves, stripes, color, and other shapes. Star argued in defense that the designs were not eligible for copyright. The District Court agreed and ruled for Star, but the Sixth Circuit reversed, holding that the graphic designs were separately identifiable from the uniforms. Star petitioned for certiorari asking the Supreme Court to resolve what Star characterized as the “most vexing, unresolved question in copyright law:” “what is the appropriate test to determine when a feature of a useful article is protectable”? The Supreme Court granted certiorari and affirmed the Sixth Circuit’s decision.


The Supreme Court adopted a two-part test, holding that a design feature of a useful article is eligible for copyright 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.”

Applying the test, the Court held that Varsity’s surface decorations are separable from the cheerleading uniforms on which they appeared because they can be identified separately and are capable of existing in another medium—such as on a painter’s canvas. Notably, the Court rejected the argument that the designs were not separable because they were laid out to fit the shape of a cheerleading uniform. The Court explained that applied art does not lose protection merely because it tracks the shape of a useful article: for example, paintings on domes or on the surface of guitars receive the same protection as paintings on flat canvases.

The Court’s new test modifies the interpretations of copyright previously followed in many lower courts and in the Copyright Office, in several ways. First, the Court held that it does not matter whether a design is “physically separable” from a useful article; before the case, the Copyright Office and the federal courts had recognized physical separability as a separate test. Second, the Court expressly rejected other approaches to separability. Notably, the Court rejected aspects of the Copyright Office’s side-by-side test and agreed with Varsity that the focus should be on whether the work is separable from the useful article, not on whether the useful article remains fully functional with the work removed. In addition, the Court rejected tests adopted by some circuits that focused on what a designer subjectively intended or whether the artistic feature would be independently marketable.


For companies in fashion and design, this decision should provide greater consistency and clarity on copyright eligibility and confidence in copyright as a viable avenue of protection in those industries.

If you are interested in the impact of Star Athletica on IP strategy or copyright litigation, please contact any of the attorneys listed below to get in touch with Goodwin’s nationally recognized IP Litigation and Appellate Litigation practices.