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Star Athletica LLC v. Varsity Brands

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Supreme Court of the United States
Star Athletica LLC v. Varsity Brands
Reference: 15-866
Issue: Copyright
Term: 2016
Important Dates
Argued: October 31, 2016
Decided: March 22, 2017
Outcome
Sixth Circuit Court of Appeals affirmed
Vote
6-2 to affirm
Majority
Chief Justice John G. Roberts • Clarence Thomas • Samuel Alito • Sonia Sotomayor • Elena Kagan
Concurring
Ruth Bader Ginsburg
Dissenting
Anthony Kennedy • Stephen Breyer


Star Athletica LLC v. Varsity Brands is a case argued during the October 2016 term of the U.S. Supreme Court. Argument in the case was held on October 31, 2016. The case came on a writ of certiorari to the United States Court of Appeals for the 6th Circuit. On March 22, 2017, writing for a five-justice majority, Justice Clarence Thomas affirmed the judgment of the Sixth Circuit Court of Appeals. Justice Ruth Bader Ginsburg authored an opinion concurring in the judgment. Justice Stephen Breyer wrote a dissenting opinion which was joined by Justice Anthony Kennedy. In the case, the court held that a single feature incorporated into the design of a useful article is eligible for copyright protection, but only if the feature can be perceived as art separate from the article and if, imagined separately, the feature itself would qualify for copyright protection.

HIGHLIGHTS
  • The case: Star Athletica LLC is challenging a Sixth Circuit ruling that Star Athletica infringed on designs protected under copyright held by Varsity Brands.
  • The issue: What is the appropriate test to determine when a feature of a useful article can be identified separately from the article itself and, therefore, can be protected under the Copyright Act?
  • The outcome: The appeal is pending adjudication before the U.S. Supreme Court.


    • In brief: The Sixth Circuit ruled that Star Athletica, LLC, violated the copyright-protected designs of Varsity Brands, Inc., for a line of cheerleader uniforms that Star marketed and sold for profit. Star Athletica claimed that the copyrighted designs are not capable of being identified separately from the functional element of the uniform; thus, the designs cannot be copyright protected. In reviewing the separability claim, the Sixth Circuit adopted a new standard by which to measure separability under copyright law, which Star Athletica claims is not the correct standard for the types of separability claims under review in this case. [1][2] Oral argument before the U.S. Supreme Court was held on October 31, 2016.

    You can review the Sixth Circuit's opinion here.[2]

    Click on the tabs below to learn more about this Supreme Court case.

    Case

    Background

    "Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks? That is the question that strikes at the heart of this appeal."[2]

    This is a case about how and by what means courts should determine whether the design features of a useful article can exist independently of, or can be identified separately from, the functional aspects of a useful article.

    Varsity Brands Inc. designs and manufactures uniforms, apparel, and accessories for athletic activities such as cheerleading. In furtherance of its brand, Varsity received copyright registration for two-dimensional artwork used in the design of its cheerleading uniforms, including "stripes, chevrons, zigzags, and color blocks." Upon notice that another uniform and apparel company, Star Athletica LLC, produced marketing materials promoting uniform designs very similar to those under copyright held by Varsity, Varsity sued Star Athletica alleging five separate claims of copyright infringement in violation of the Copyright Act.

    In district court, Star challenged the validity of Varsity's copyright claims on two separate grounds. First, Star alleged that Varsity's designs were for "useful articles." According to the United States Copyright Office, "a 'useful article' is an object having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information ... Copyright in a work that portrays a useful article extends only to the artistic expression of the author of the pictorial, graphic, or sculptural work. It does not extend to the design of the article that is portrayed."[3] Star claimed that, because Varsity's design was for a useful article under copyright law, the designs could not be afforded copyright protection.

    Second, Star argued that "the pictorial, graphic, or sculptural elements of Varsity's designs were not physically or conceptually separable from uniforms, making the designs ineligible for copyright protection." [2]According to the U.S. Copyright Office, "Copyright ... may ... protect any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object."[3] Star's argument was that because the design elements that were held under copyright by Varsity could not be identified separately from the cheerleading uniforms that Varsity manufactured, these designs could not be copyright protected.

    Judge Robert Cleland of the United States District Court for the Western District of Tennessee ruled that Varsity's designs were not copyrightable because the designs were not "physically or conceptually separable" from the cheerleading uniform. "In other words, the district court held that the aesthetic features of a cheerleading uniform merge with the functional purpose of the uniform."[2] Varsity appealed to the Sixth Circuit Court of Appeals.

    The Sixth Circuit vacated and remanded Judge Cleland's decision. The court held that Judge Cleland failed to give appropriate deference to the Copyright Office's determination that Varsity's designs were protectable by copyright.

    That said, the Sixth Circuit went on to evaluate the presumed validity of the copyright Varsity holds by reviewing Star's argument that the designs were not separable from the uniform, i.e., the "useful article." If Star was correct and the designs were not separable, the designs could not be copyright protected.

    Such a review was new for the Sixth Circuit. According to the court's opinion, "We have not yet adopted an approach to determining whether the pictorial, graphic, or sculptural features of the design of a useful article are separable from the utilitarian aspects of a useful article, and so we do so now."

    The Sixth Circuit acknowledged that "there are two ways to determine whether a pictorial, graphic, or sculptural work is separable from the utilitarian aspects of an article--physical separability and conceptual separability." Because the Sixth Circuit identified that the designs here could not be physically separated from the utilitarian aspects of the uniform, the court relied on evaluating the conceptual separability of the designs. This, they acknowledged, was a difficult task,[2]

    “

    Courts have struggled mightily to formulate a test to determine whether 'the pictorial, graphic, or sculptural features' incorporated into the design of a useful article 'can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article' when those features cannot be removed physically from the useful article. [4]

    		”

    The Sixth Circuit identified nine separate approaches either proposed or used to assess conceptual separability, and noted that the Second Circuit and Fourth Circuit used hybrid approaches to evaluate conceptual separability. In announcing its own standard, the Sixth Circuit devised a series of questions through which a conceptual separability claim must be assessed. Those questions are:

    • 1. Is the design a pictorial, graphic, or sculptural work?
    • 2. Is it a design of a useful article?
    • 3. What are the utilitarian aspects of the useful article?
    • 4. Can the viewer of the design identify the pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article?
    • 5. Can the pictorial, graphic, or sculptural features exist independently off of the utilitarian aspects of the useful article?
      [2]

    The Sixth Circuit, in adopting this standard, assessed Star Athletica's challenge to Varsity's designs. "Because we conclude that the graphic features of Varsity’s designs 'can be identified separately from, and are capable of existing independently of, the utilitarian aspects of [cheerleading uniforms],' we hold that Varsity’s graphic designs are copyrightable subject matter."[2]

    As there was an outstanding federal claim that was not addressed by the district court -- that Varsity's designs were unoriginal and, therefore, not eligible for copyright protection -- the Sixth Circuit remanded the case to the district court for additional proceedings. The Sixth Circuit also vacated a portion of Judge Cleland's decision dismissing Varsity's claims under state law.[2]

    Petitioner's challenge

    Star Athletica is challenging the validity of the standard adopted by the Sixth Circuit Court of Appeals to assess conceptual separability of a feature of a useful article for the purpose of evaluating the copyright protectability of that feature.

    Certiorari granted

    On January 5, 2016, petitioner Star Athletica, LLC, initiated proceedings in the Supreme Court of the United States in filing a petition for a writ of certiorari to the United States Court of Appeals for the 6th Circuit. The U.S. Supreme Court granted Star Athletica's certiorari request on May 2, 2016, limiting argument to question 1 of the petition. Oral argument before the Supreme Court was held on October 31, 2016.

    Arguments


    Question presented

    Question presented:

    "Whether, in determining a copyright registration's validity, a court should give any judicial deference in addition to the statutory deference articulated in 17 U.S.C. § 410(c)."[1]


    Audio

    • Audio of oral argument:[5]



    Transcript

    • Transcript of oral argument:[6]

    Outcome

    Decision

    Justice Clarence Thomas, writing for a five-justice majority, affirmed the judgment of the Sixth Circuit Court of Appeals. Justice Ruth Bader Ginsburg wrote an opinion concurring in the judgment. Justice Stephen Breyer authored a dissenting opinion which was joined by Justice Anthony Kennedy. In the opinion, the court held that a single feature incorporated into the design of a useful article is eligible for copyright protection, but only if the feature can be perceived as art separate from the article and if, imagined separately, the feature itself would qualify for copyright protection.[7]

    Opinion

    In his opinion for the court, Justice Thomas articulated the view that the Copyright Act extended copyright protection to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles and that, in his words, "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." Applying this test to the features under review in this case, the court held that the Sixth Circuit correctly applied the statute in this case. Thomas then elucidated the test for similar cases going forward, "We hold that an artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article. Because the designs on the surface of respondents’ cheerleading uniforms in thi scase satisfy these requirements, the judgment of the Court of Appeals is affirmed."[7]

    Concurring opinions

    Justice Ruth Bader Ginsburg filed an brief opinion concurring in the judgment. In Justice Ginsburg's view, there was no need to conduct a separability analysis because, in her view, the designs at issue in this case were not designs of useful articles, but were rather copyrightable designs that were reproduced on useful articles. In her words, "a pictorial, graphic, or sculptural work (PGS work) is copyrightable. ... PGS works include 'two dimensional and three-dimensional works of fine, graphic,and applied art.' ... Key to this case, a copyright in a standalone PGS work 'includes the right to reproduce the work in or on any kind of article, whether useful or otherwise.' ... Because the owner of a copyright in a preexisting PGS work may exclude a would-be infringer from reproducing that work on a useful article, there is no need to engage in any separability inquiry to resolve the instant petition."[7]

    Dissenting opinions

    Justice Stephen Breyer filed a dissenting opinion which was joined in full by Justice Anthony Kennedy. Although he admitted that he agreed with much of the court's opinon, Justice Breyer argued that the he did not agree the designs were copyrightable because, even under the test announced by the court, the designs could not be perceived as two- or three-dimensional works of art that were separable from the useful article. In Justice Breyer's words,[7]

    “

    As Varsity would have it, it would prevent its competitors from making useful three-dimensional cheerleader uniforms by submitting plainly unoriginal chevrons and stripes as cut and arranged on a useful article. But with that cut and arrangement, the resulting pictures on which Varsity seeks protection do not simply depict designs. They depict clothing. They depict the useful articles of which the designs are inextricable parts. And Varsity cannot obtain copyright protection that would give them the power to prevent others from making those useful uniforms, any more than Van Gogh can copyright comfortable old shoes by painting their likeness. [4]

    		”


    The opinion

    Filings

    The court granted Star Athletica's certiorari request on May 2, 2016, limiting argument to question 1 of the petition.

    Merits filings

    Parties' filings

    • Star Athletica, LLC, the petitioner, filed a merits brief on July 15, 2016.
    • Varsity Brands, the respondent, filed its merits brief on September 14, 2016.
    • Star Athletica, LLC filed a reply brief on the merits on October 14, 2016.

    Amicus curiae filings

    The following groups filed amicus curiae briefs in support of the petitioner, Star Athletica, LLC.

    • Brief of Christopher Buccafusco and Jeanne Fromer. Both are professors.
    • Brief of Public Knowledge et al.
    • Brief of the Royal Manticoran Navy, the Official Honor Harrington Fan Association, Inc.
    • Brief of various intellectual property law professors


    The following groups filed amicus curiae briefs in support of the respondent, Varsity Brands, Inc.

    • Brief of Chosun International, Inc.
    • Brief of the Fashion Law Institute et al.
    • Brief of the Intellectual Property Owners Association
    • Brief of Professors Jeannie Suk Gersen and C. Scott Hemphill
    • Brief of the United States of America


    The following groups filed amicus curiae briefs in support of neither party.

    • Brief of the American Intellectual Property Law Association
    • Brief of the Intellectual Property Law Association of Chicago
    • Brief of the New York Intellectual Property Law Association

    Certiorari filings

    Parties' filings

    • Star Athletica, LLC, the petitioner, filed a petition for certiorari on January 5, 2016.
    • Varsity Brands, the respondent, filed a brief in opposition to certiorari on March 4, 2016, after the court granted an order extending time to file.


    Amicus curiae

    The following groups filed amicus curiae briefs in support of granting certiorari

    • Brief of FormLabs, Inc., et al.
    • Brief of Public Knowledge et al.

    See also

    Footnotes

    1. ↑ 1.0 1.1 Supreme Court of the United States, Star Athletica LLC v. Varsity Brands, May 2, 2016
    2. ↑ 2.0 2.1 2.2 2.3 2.4 2.5 2.6 2.7 2.8 U.S. Court of Appeals for the Sixth Circuit, Varsity Brands, Inc. et al. v. Star Athletica, LLC, decided August 19, 2015
    3. ↑ 3.0 3.1 U.S. Copyright Office, "Useful articles," accessed September 19, 2016
    4. ↑ 4.0 4.1 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
    5. ↑ Supreme Court of the United States, Star Athletica, L.L.C. v. Varsity Brands, Inc., argued October 31, 2016
    6. ↑ Supreme Court of the United States, Star Athletica L.L.C., v. Varsity Brands, Inc., argued October 31, 2016
    7. ↑ 7.0 7.1 7.2 7.3 Supreme Court of the United States, Star Athletica, LLC, v. Varsity Brands, Inc., decided March 22, 2017
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