Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. 405 (2017), was a U.S. Supreme Court case in which the court decided under what circumstances aesthetic elements of "useful articles" can be restricted by copyright law. The Court created a two-prong "separability" test, granting copyrightability based on separate identification and independent existence; the aesthetic elements must be identifiable as art if mentally separated from the article's practical use, and must qualify as copyrightable pictorial, graphic, or sculptural works if expressed in any medium.
The case was a dispute between two clothing manufacturers, Star Athletica and Varsity Brands. Star Athletica began creating cheerleading uniforms with stripes, zigzags, and chevron insignia similar to those made by a Varsity subsidiary, but at a lower price. Varsity sued Star Athletica for copyright infringement, and Star Athletica said that the clothing designs were uncopyrightable because their aesthetic designs were tied closely to (and guided by) their utilitarian purpose as uniforms. The court rejected this argument with a close reading of the statute and established that the clothing designs, as aesthetic elements of a useful article of clothing, could be copyrightable. It declined to hear Star Athletica's follow-up question about whether Varsity's designs were original enough to be copyrightable, so that part of the case remained unaddressed and Varsity's copyright registrations stood.
The court's conclusion that aesthetic elements of useful articles (and, thereby, clothing-design elements) could be copyrighted intrigued fashion designers and intellectual property scholars. Some were pleased with the decision because they saw extending copyright to clothes as parity with other creative industries which had had copyrights for much longer. Others denounced the court's opinion because of ambiguities in how to enforce the new rules and because of its potential to end fashion trends in generic clothing.
Background Fashion was uncopyrightable Clothing designs were originally not subject to copyright law ("uncopyrightable") in the United States.Leslie J. Hagin, A Comparative Analysis of Laws Applied to Fashion Works: Renewing the Proposal for Folding Fashion Works Into the United States Copyright Statute, in 40 Copyright Law Symposium 331 (1997). In 1941, the court heard Fashion Originators' Guild of America v. FTC. This case considered the fashion industry's practice of boycotting the sale of its "high fashion" works at places which would sell knock-offs made by other companies for lower prices, known as "style piracy". The court ruled against the Guild, saying that its practice of attempting to create a monopoly outside the copyright system suppressed competition and violated the Sherman Antitrust Act. Outside fashion, Mazer v. Stein established in 1954 that an artistic statue created to adorn a lamp base could be copyrightable separately from the lamp under expansions of the Copyright Act of 1909; the statue's mass production with the lamp did not invalidate that.
Another barrier to copyrightability in the United States is a vague threshold of originality which must be met to be eligible for an intellectual-property monopoly like a copyright or patent. In 1964's Sears, Roebuck & Co. v. Stiffel Co., the court upheld a lower-court ruling that Stiffel's popular lamp design was not original enough to warrant a patent, rescinding that restriction and passing the design into the public domain. The court's opinion indicated that the same logic would apply to an inappropriate copyright.
In the Copyright Act of 1976, Congress changed the copyright law to allow copyrighting aesthetic features of "useful articles" or "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." Congress intended to better incorporate the Mazer v. Stein ruling by doing so, clarifying the difference between the copyrightability of "applied art" and the traditional, lesser restriction of "industrial design" (the combination of features provided by design patents or trade dress). According to the Act, "pictorial, graphic, or sculptural features" of useful articles were copyrightable only if "separable" from the utilitarian aspects of the design and capable of existing independently of the article. This broad, definitional language led to about ten competing, inconsistent legal tests for that separability, a state of affairs which was criticized for appearing to require judges to be art critics.
Because clothes have both aesthetic and utilitarian features in their design, they fall into this useful-article category; therefore, the shapes and cuts of clothing are not copyrightable. Designs placed on clothing were opened up to the possibility of copyrightability, subject to those tests. The law was construed to mean that copyrighted two-dimensional designs could be placed on clothing and fabric-pattern sheets could be copyrighted before being cut to make clothing, but an article of clothing's overall color scheme and design could not be copyrighted because it was not capable of existing independently of the final useful article. Some fashion designers bristled under the rules, wondering why other creative industries like films or music were allowed to restrict access to their products with copyright and they were not.Brief of Council of Fashion Designers of America as Amicus Curiae, Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, 580 U.S. ___ (2017) Others interpreted fashion's successes as an industry thriving in the absence of copyright, perhaps in part because of that.Brief of Public Knowledge, the International Costumers Guild, Shapeways, Inc., the Open Source Hardware Association, Formlabs Inc., Printrbot Inc., the Organization For Transformative Works, the American Library Association, the Association of Research Libraries, and The Association of College and Research Libraries as Amici Curiae, Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, 580 U.S. ___ (2017) Members of Congress introduced several bills to remove the separability requirement from the law, but none were signed into law.
As alternatives, fashion designers turned to other forms of intellectual property: design patents and trade dress, an aspect of trademark. These generally provided designers causes of action to sue suspected infringers. However, they were critical of the hurdles necessary to acquire these. The process to acquire a design patent could last longer than the trend on which the designer wanted to capitalize. Trade dress required the public to recognize a secondary meaning associating the design with its origin, and was subject to contradictory rulings from the Supreme Court. It was also vulnerable to dilution if courts determined that it was not being policed sufficiently. Defenders of the slow design-patent process said that the design patent's hurdle benefited society as a whole because the extra time prevented ill-advised patents which would disrupt innovation. Extending trademark to fashion had its critics, who argued that the court was out of line when it applied the trade-dress doctrine to fashion after Congress declined to extend trade dress to it in the past. Apart from intellectual property, there were also remedies under laws banning the sale of counterfeits and post-sale protection confusion.
Varsity Brands Varsity Brands was the parent company of Varsity Spirit, which had become the largest cheerleading and sports-uniform manufacturer in the world by the end of the 2000s. Because of the law, Varsity could not register copyrights for its cheerleading-uniform designs as clothing. Instead, Varsity applied for copyrights on drawings and photographs of those designs as "two-dimensional artwork" or "fabric design (artwork)." The design in the images would then be applied to the clothing with sewing or sublimation, a process where designs are printed on paper, placed on the fabric, and heated so the ink sinks in. After rejections by the Copyright Office, Varsity described the uniforms in extremely specific detail to make the registration appear limited and improve its registration chances. The Copyright Office approved over 200Star Athletica, slip op. at 1. of these copyrights with meticulous descriptions like "has a central field of black bordered at the bottom by a gray/white/black multistripe forming a shallow 'vee' of which the left-hand leg is horizontal, while the right-hand leg stretches 'northeast' at approximately a forty-five degree angle." Varsity frequently filed lawsuits alleging infringement with accusations of general copying to halt other companies from merchandising competing uniforms. The competitors regarded the lawsuits as frivolous because the claimed designs were so simple.
Star Athletica lawsuit
The Liebe Company founded Star Athletica as a subsidiary in January 2010. Varsity Brands had cancelled an agreement with The Liebe Company's sports-lettering subsidiary, and Varsity accused The Liebe company of founding Star Athletica to retaliate by leveraging former Varsity employees' knowledge of Varsity designs. Later that year, Varsity Brands sued Star Athletica for infringing five of its copyrighted designs for cheerleading uniforms.Star Athletica, slip op. at 2 (quoting 2014 WL 819422, *8-*9 (WD Tenn., Mar. 1, 2014)). The Star Athletica designs were not exactly identical (physically or graphically), but Varsity's general description of allegedly-copied elements in court filings ("the lines, stripes, coloring, angles, V's [or chevrons], and shapes and the arrangement and placement of those elements") suited both designs and the case moved forward. Varsity also sued for trademark infringement under the Lanham Act and Star Athletica counter-sued Varsity under the Sherman Antitrust Act for allegedly monopolizing the cheerleading industry,Brief of the Respondents (Sep. 14, 2016), Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, 580 U.S. ___ (2017) but those claims were dismissed.
In 2014, the United States District Court for the Western District of Tennessee ruled in Star Athletica's favor on the grounds that the designs were not eligible for copyright restriction. According to Judge Robert Hardy Cleland, a design without distinctive marks (like chevrons and zigzags) would not be identifiable as cheerleading uniforms, so the designs were not separately identifiable. They were not conceptually separable because the marks, outside the context of the clothing, would have still evoked the idea of a cheerleading uniform.