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

8 Min Read By: Patrick T. Clendenen

IN BRIEF

  • Are features incorporated into the design of a useful article eligible for protection under federal copyright law?
  • The U.S. Supreme Court said “yes” recently, but the concurring and dissenting opinions illustrate differing interpretations of what it means to follow the clear and plain meaning of the Copyright Act.
  • All three opinions appear to agree that the Copyright Act is in need of revision.

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 are two- or three-dimensional. Indeed, on its face, Justice Thomas emphasized that section 101 textually defined “pictorial, graphical, and sculptural works to include” two-dimensional works of art.

Justice Thomas next explained that, under the Copyright Act, the particular order in which the “pictorial, graphic, and sculptural works” were created does not affect their protectability. In other words, they can be created as “free-standing art or as features of useful articles.” As a result, the critical question is therefore “whether the feature for which copyright protection is claimed would have been eligible for copyright protection . . . had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.” He concluded the court’s analysis by citing to the history of the Copyright Act as interpreted by the U.S. Supreme Court, explaining that, “[i]f a design would have been copyrightable as a standalone pictorial, graphic, or sculptural work, it is copyrightable if created first as a part of a useful article.”

Justice Thomas then applied the court’s test to the surface decorations of Varsity’s cheerleading uniforms and held that they are protectable. The decorations at issue first had “pictorial, graphic, or sculptural qualities” and would qualify as two-dimensional works of art when separated from the uniforms themselves. In addition, Justice Thomas importantly noted that the court’s holding did not concern the “shape, cut, and dimensions” of the cheerleading uniforms as they are ultimately manufactured. Rather, “the only feature of the cheerleading uniform eligible for a copyright in this case is the two-dimensional work of art fixed in the tangible medium of the uniform fabric.” Finally, the court rejected the argument that the conceptual, statutory undertaking of separability required a free-standing “useful article to remain,” and it rejected the notion that its test should include “objective” components, primarily those concerning “the designer’s artistic judgment” and the marketability of the protectable feature “without its utilitarian function.”

The court’s holding—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 . . . work either on its own or in some other medium if imagined separately from the useful article”—is not without its detractors. Justice Breyer, joined by Justice Kennedy, dissented, believing that Varsity’s designs were not eligible for copyright protection because the designs cannot be perceived as two- or three-dimensional works of art separate from the useful article.

Their dissenting opinion emphasized that the separable design feature must be “capable of existing independently” without replication of “the useful article of which it is a part.” This focus stemmed from the designs submitted by Varsity themselves, which, when arranged physically or on a blank sheet, still comprised “a cheerleader’s dress.” As a result, the dissent argued that the designs were not copyrightable because each one “is not physically separate, nor is it conceptually separate, from the useful article it depicts, namely, a cheerleader’s dress.” In other words, and in summary, Justice Breyer believed that the majority ignored an important limiting principle of the Copyright Act: “One may not claim a copyright in a useful article merely by creating a replica of that article in some other medium, such as in a picture.”

Reaction to the court’s majority opinion has been mixed, but favorable overall. If clothing designers, for example, overcome the initial originality hurdle, some believe that designers can be expected to start applying for copyrights in the clothing industry, which today is rare. Others believe that the opinion simplified the traditional analysis but left some questions unanswered. Some see implications that may reduce competitive forces in the garment and apparel industry, perhaps permitting larger companies to claim copyright protection and to pursue statutory damages against smaller competitors over designs incorporated into useful articles that have traditionally not been considered protectable.

Taking a different tack, Justice Ginsburg concurred in the result but not in the opinion, believing that the question of separability did not need to be reached in the first place. Indeed, she believed that: “Consideration of [the separability] test is unwarranted because the designs at issue are not designs of useful articles. Instead the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.” All three opinions appeared to agree that the Copyright Act was in need of revision, or its interpretation changed, but the Supreme Court may have simply selected the wrong case in which to announce its views, which will lead to future uncertainty and further litigation.

Most interesting from a purely jurisprudential perspective is that, although all three justices writing opinions for the court claimed to be reading and following the clear and plain meaning of the Copyright Act, they reached entirely different conclusions. How can this be?

In addition to the text most immediately applicable, Justice Thomas looked “to the provisions of the whole law to determine § 101’s meaning.” It appears that Justice Thomas thus adopted the rule of statutory interpretation “that best fits with the statute and other related elements in the legal order, determined as of the time the statute was enacted.” Reed Dickerson, The Interpretation and Application of Statutes 243 (1975). In more contemporary terms, this device is called the “whole-text canon,” in which the court considers “the entire text, in view of its structure and of the physical and logical relation of its many parts.” Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 167 (2012).

Justice Ginsberg read section 101 in light of the factual record developed below and determined that the separability test was “unwarranted because the designs at issue are not designs of useful articles.” It appears that Justice Ginsberg thus adopted what she considered “the preferable rule for the kind of situation before [the court], as determined without regard to legislative intent or the related elements of the legal order, including the statute under consideration.” Dickerson, at 243. Here, she also appears to have employed the “traditionalist view” that the “enacted text is itself the law,” and that section 101’s separability test, in whatever formulation, simply did not apply. Scalia & Garner, at 397 (exploring the plain language of the statute as evidence of legislative intent).

Finally, Justice Breyer relied on the majority opinion itself, secondary sources, the expressed views of the Copyright Office, and the legislative history of the Copyright Act to interpret “Congress’ own expressed intent” through section 101. It appears that Justice Breyer thus adopted the rule of statutory interpretation “that the original legislature probably would have adopted had it dealt with the problem at the time it enacted the statute,” including consideration of evidence of legislative intent “outside legislative context” and “occasional items of legislative history.” See Einer Elhauge, Statutory Default Rules: How to Interpret Unclear Legislation 119–133 (2008) (outlining the various legitimate objections to the use of legislative history and concluding that judges may rely on committee and sponsor statements to identify legislative statements to which no objection was lodged and to identify “the best evidence of what political preferences were actually enactable”).

The Copyright Act was passed some time ago in 1976. What are the actual political preferences of today’s voters and the Millennials? Considering the divergent views of the statute expressed in the Supreme Court’s decisions, is it time for Congress again to speak on the subject?

ABOUT THE AUTHOR

Boston, MA

Patrick T. Clendenen

Patrick Clendenen practices in the Business Law and Litigation areas. He is a trial lawyer with significant experience in sophisticated business and fiduciary disputes, including contracts, consumer…

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