Separability and Statutory Interpretation: Star Athletica and the Copyright Act of 1976

On March 22, 2017, the U.S. Supreme Court addressed and decided whether features incorporated into the design of a useful article are eligible for protection under federal copyright law. In a 6-2 decision, and in an opinion written by Justice Thomas, the court held in Star Athletica, LLC v. Varsity Brands, Inc. that such features are protectable under federal copyright law only if: (i) they can be perceived as a two- or three-dimensional work of art separate from the useful article, and (ii) they would qualify as protectable pictorial, graphic, or sculptural work separately from the useful article into which they are incorporated. In the case, which concerned graphic design features of cheerleading uniforms, the court held that the conjunctive test announced in its decision had been met and that the designs at issue were protectable.
The underlying litigation arose from a copyright infringement complaint filed against Star Athletica for the marketing and sale of cheerleading uniforms that were claimed to be substantially similar to those designed, marketed, and sold by Varsity Brands. The principal basis and support for the complaint was 17 U.S.C. § 101, which protects “pictorial, graphic, or sculptural features” in the “design of a useful article” if they can be identified separately and can exist independently of the “utilitarian aspects of the article.”
Varsity had obtained “more than 200 U.S. copyright registrations for two-dimensional designs appearing on the surface of their uniforms and other garments,” which included shapes, lines, curves, angles, and “chevrons.” After summarizing the travel of the case in the lower courts and recounting the statutory definitions under the Copyright Act of 1976 (the Copyright Act) for “works of authorship” and “useful article,” the court defined the central question as “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.”
Justice Thomas’s opinion for the majority first rejected the notion that “separability” analysis—i.e., the question whether the decorations at issue were separable from the utilitarian aspects of the uniforms—was not required under section 101 for “two-dimensional artistic features on the surface of useful articles.” Citing to the text of section 101, the court emphasized that the statute required separability analysis for “any pictorial, graphic, or sculptural features incorporated into the design of a useful article,” regardless of whether they ar