Authored By: Kayleona Hill
University of Central Oklahoma
Case Citation and Basic Information
Citation: Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
Court: Supreme Court of the United States.
Date of Decision:March 22, 2017.
Bench Composition: Justice Clarence Thomas (majority opinion), Chief Justice John G. Roberts, Jr., Justice Samuel A. Alito, Jr., Justice Sonia Sotomayor, Justice Elena Kagan, Justice Ruth Bader Ginsburg (concurring in the judgment), Justice Stephen G. Breyer (dissenting), Justice Anthony M. Kennedy (joined the dissent)
Introduction
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017), concerns copyright protection regarding features bound artistically incorporated into applicable articles under the Copyright Act of 1976, particularly 17 U.S.C. § 101. This decision stands as a landmark throughout United States copyright law due to the Supreme Court establishment of a uniform test that situates when artistic elements of useful articles ought to become eligible for copyright protection. Thus, through the resolution of conflicts in approach amongst lower courts, the Court explained and provided clarification for the doctrine of separability, consequently granting access to heightened certainty for designers, manufacturers, and, crucially, copyright owners while identifying and then defining the boundary that separates copyright protection and industrial design.
Facts of the Case
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
Varsity Brands, Inc., together with Varsity Spirit Corporation and Varsity Spirit Fashions & Supplies, Inc. (collectively “Varsity”), designs, manufactures, and sells cheerleading uniforms. Varsity obtained more than 200 United States copyright registrations covering two-dimensional surface designs consisting of original combinations of lines, chevrons, stripes, curves, angles, colours, and geometric shapes applied to the uniforms’ fabric. Five registered designs formed the basis of the dispute.
Star Athletica, L.L.C., a competing manufacturer, marketed uniforms that Varsity allegedly copied the protected surface designs by reproducing the arrangement of decorative elements without authorisation.
The dispute concerned whether the surface designs, rather than the uniforms’ shape, cutting, or functional design, were eligible for copyright protection under the Copyright Act of 1976. Because the uniforms were “useful articles” under 17 U.S.C. § 101, only pictorial, graphic, or sculptural features distinguishable from and existing independently of the utilitarian aspects were protected. Star Athletica argued the stripes, chevrons, and colours served a functional role, while Varsity argued the designs were independent artistic works that could be reproduced on other media without reproducing the uniform itself.
The Supreme Court was required to determine the proper interpretation of the Copyright Act’s separability requirement for artistic features incorporated into useful articles and whether Varsity’s registered surface designs were eligible for copyright protection independent of the utilitarian garments on which they appeared.
Legal Issues
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
Issue 1: Whether the decorative surface designs of cheerleading uniforms qualify as “pictorial, graphic or sculptural features” of a useful article within 17 U.S.C. § 101.
Issue 2: Whether the decorative aspects of the cheerleading uniforms designed by Varsity Brands can be distinguished from, and exist independent of, the utilitarian aspects of said uniforms as per 17 U.S.C. § 101.
Arguments Presented
5.1 Petitioner/Appellant’s Arguments
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
Star Athletica asserted that the designs of cheerleading uniforms belonging to Varsity Brands were not subject to copyright protection because the combinations of lines, chevrons, stripes, and color blocks were not separate from the utilitarian purpose of those cheerleading uniforms. According to the Copyright Act and its description of a useful article in Section 17 U.S.C. § 101, Star Athletica believed that the designs served to identify the garments as cheerleading uniforms and contributed to the functionality of those garments.
The petitioner further argued that copyright protection should extend only to features that are purely artistic and have no functional relationship to the useful article. It proposed that courts consider whether the remaining article would retain its utility after the artistic features were removed and suggested additional objective factors, including the designer’s intent and the marketability of the extracted design. Star Athletica also maintained that Congress intended industrial design, including clothing design, to remain outside the scope of copyright law and instead be protected, where appropriate, through design patents rather than copyright. To support this interpretation, it relied on the legislative history of the Copyright Act and the limited statutory protection Congress has provided for specific industrial designs.
5.2 Respondent’s Arguments
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
Varsity Brands argued that its two-dimensional surface decorations constituted original pictorial and graphic works entitled to copyright protection under 17 U.S.C. §§ 101–102. The respondents contended that the arrangements of lines, chevrons, colours, and geometric shapes could be identified separately from the uniforms and could exist independently as artistic works if reproduced on another medium, such as different garments, posters, or framed artwork.
In addition, the respondents further stated that the Copyright Act secures the expression of art which is embedded within useful articles, provided that the protected elements meet the statutory requirement of separability. These respondents cited Mazer v. Stein, 347 U.S. 201 (1954), in claiming that works of art shall not be deemed to have lost copyright protection simply because such works were affixed to useful articles. In this case, Varsity argued that it only wanted to secure copyright protection for the design elements of its cheerleading uniforms but not the actual form of the said uniforms.
Court’s Reasoning and Analysis
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
The Supreme Court considered the case as one that needed statutory construction under the Copyright Act of 1976. The Court started its analysis with 17 U.S.C. § 101, where it is stated that copyright protection is available for the “pictorial, graphic, or sculptural aspects of an object” provided that such features can be separated from and function independently of the useful aspect of the object. The Court rejected Varsity’s preliminary contention that two-dimensional surface decorations were automatically separable merely because they appeared on, rather than formed, the useful article. According to the Court, § 101 expressly includes two-dimensional pictorial and graphic features within the design of a useful article, so the statutory separability inquiry remained necessary.
The Court developed a two-part test: first, a decisionmaker must be able to perceive a two- or three-dimensional artistic feature apart from the useful article; second, once imaginatively separated, that feature must qualify as a protectable pictorial, graphic, or sculptural work on its own or in another tangible medium. The inquiry focuses on the extracted artistic feature, not whether the remaining article continues to function. Reading §§ 101, 106(1), and 113(a) together, the Court reasoned that copyright protection should not depend on whether art was first created independently and later placed on a useful object, or initially fixed on the useful object itself. 17 U.S.C. §§ 101, 106(1), 113(a).
The Court relied on Mazer v. Stein, 347 U.S. 201 (1954), which upheld copyright protection for a statuette used as a lamp base, demonstrating that an artistic work does not lose protection because it serves a practical purpose. Applying that principle, the Court concluded that Varsity’s colors, stripes, shapes, and chevrons could be perceived independently and reproduced on a canvas or another garment without reproducing the uniform itself.
The Court rejected Star Athletica’s proposed requirements concerning the designer’s intent, the design’s marketability, the continued usefulness of the undecorated uniform, and a presumption against industrial-design protection because none appeared in the statutory text. Varsity could potentially control reproduction of the surface artwork, but not the uniforms’ shape, cut, or dimensions. Justice Ginsburg concurred because the designs were independently created graphic works reproduced on uniforms under § 113(a). Justice Breyer, joined by Justice Kennedy, dissented because the extracted designs still depicted and replicated cheerleading uniforms and therefore could not exist independently of the useful articles.
Judgement and ratio Decidendi
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
The Judgment
The Supreme Court agreed with the United States Court of Appeals for the Sixth Circuit that Varsity Brands’ designs on the surface for ornamental intent met the requirement of separability under 17 U.S.C. § 101 and qualified for copyright protection as pictorial, graphic, or sculptural works. The designs were separable from the uniforms’ functional features and could exist independently as two-dimensional artworks. The case was remanded for further proceedings. The decision protected only the designs’ artistic elements, not the uniforms’ shape, cut, or size. Star Athletica, 580 U.S. at 420–22.
Ratio Decidendi
A visual feature used in a useful article is copyrightable under 17 U.S.C. § 101 if (1) it is perceptible as a work of art independently of the useful article and (2) would be copyrightable on its own. This two-part separability test governs future copyright disputes involving artistic features incorporated into useful articles. Star Athletica, 580 U.S. at 420–21.
Critical Analysis
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
8.1 Significance of the Decision
Star Athletica significantly developed copyright law by replacing the numerous physical and conceptual separability approaches used by lower courts with a single two-part test under 17 U.S.C. § 101. This decision resolved a long-standing issue as to the point at which artistic elements embodied in a useful item become eligible for copyright protection. This approach to resolving the issue based on the nature of the element is an important strength of the decision since it allows courts to determine whether the artistic element claimed can exist as a separate pictorial, graphic or sculptural element. The decision also upholds the rule established in Mazer v. Stein, 347 U.S. 201 (1954).
8.2 Implications and Impact
The ruling impacts designers and manufacturers in the areas of fashion design, furniture design, jewelry, and others that use artistry in functional items. The ruling broadens the practical coverage for surface artworks while maintaining competitive fairness by not allowing copyright protection for the utilitarian aspects of the shape and design of the object. Nevertheless, Jane Ginsburg observes that the decision did not achieve complete clarity, especially when its test is applied beyond two-dimensional surface designs. Jane C. Ginsburg, Copyright Protection for Applied Art and Works of Artistic Craftsmanship After Star Athletica, 43 Colum. J.L. & Arts 423, 427–29 (2020). Using chairs, a sculptural chair base, and a wine rack as examples, Ginsburg demonstrates that the test becomes difficult when an artistic element can be imagined separately but simultaneously performs part of the object’s function.
8.3 Critical Evaluation
The Court’s strongest contribution is doctrinal uniformity: judges no longer need to choose among several inconsistent separability tests. Its rejection of marketability, designer intent, and the usefulness of the remaining article also prevents copyright protection from depending on subjective judgments or commercial popularity. However, the Court may have framed the dispute too broadly. Ginsburg argues that Varsity’s works could have been treated as independently copyrightable two-dimensional designs reproduced on useful articles under 17 U.S.C. § 113(a), making separability analysis unnecessary. Ginsburg, supra, at 425–26. This narrower approach would have resolved the dispute without creating uncertainty for three-dimensional designs. Accordingly, Star Athletica meaningfully simplified the formal doctrine, but its “imagination” inquiry may merely relocate, rather than eliminate, the uncertainty surrounding applied art.
Conclusion
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
In the Star Athletica case, the Supreme Court solved the biggest ambiguity in the American Copyright Law by setting out a consistent standard that should be used to determine when artistic elements added to useful objects can be protected by copyright according to 17 U.S.C. § 101. Based on the said standard, the Court ruled that the surface decorations of the cheerleader uniforms designed by Varsity Brands could exist separately from their utilitarian characteristics and thus should be copyrighted.
The case’s most important contribution is its adoption of a single, text-based separability test that replaced the inconsistent approaches previously used by lower courts. Although the decision provides greater predictability for creators, designers, and courts, questions remain regarding how the test should apply to more complex three-dimensional industrial designs. As later scholarly commentary has observed, the decision resolved significant doctrinal uncertainty while leaving future courts to define the limits of the imagination-based separability inquiry. Consequently, Star Athletica will remain a leading authority on the relationship between copyright protection and functional design, particularly in the fields of fashion and applied art.
Reference(S):
Cases
Mazer v. Stein, 347 U.S. 201 (1954).
Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).
Statutes
17 U.S.C. § 101.
17 U.S.C. § 102(a).
17 U.S.C. § 106(1).
17 U.S.C. § 113(a).
Secondary Sources
Jane C. Ginsburg, Copyright Protection for Applied Art and Works of Artistic Craftsmanship After Star Athletica, 43 Colum. J.L. & Arts 423 (2020).
