Star Athletica, L. L. C. v. Varsity Brands, Inc.
137 S. Ct. 1002
| SCOTUS | 2017Background
- Varsity (respondents) obtained >200 copyright registrations for two-dimensional surface designs (chevrons, lines, colors) applied to cheerleading uniforms; five designs were disputed.
- Star Athletica (petitioner) sells competing cheer uniforms; Varsity sued for copyright infringement.
- District Court granted summary judgment for Star, holding the designs were inseparable from the utilitarian uniform and thus not copyrightable under 17 U.S.C. §101.
- Sixth Circuit reversed, finding the surface graphics separable and capable of independent existence.
- Supreme Court granted certiorari to resolve the proper test for §101’s “separately identified” and “capable of existing independently” requirements.
- The Court affirmed the Sixth Circuit, adopting a test focusing on whether an incorporated feature can be perceived as a separate two- or three‑dimensional work of art and would qualify as a pictorial, graphic, or sculptural work if imagined apart from the useful article.
Issues
| Issue | Plaintiff's Argument (Varsity) | Defendant's Argument (Star) | Held |
|---|---|---|---|
| Whether separability analysis applies to two‑dimensional surface art on useful articles | Designs are standalone two‑dimensional PGS works reproduced on uniforms; separability not required | Separability required; designs are part of uniform design | Court: Separability applies because §101 treats pictorial/graphic features as part of the "design of a useful article" |
| Proper test for §101’s “identified separately” and “capable of existing independently” | Feature can be identified visually and, if imagined apart, would qualify as a PGS work | Feature is inseparable because it contributes to the uniform’s utilitarian function (identifying wearer as cheerleader); some urge requiring the remainder to remain equally useful | Court: Adopted test — feature must (1) be perceivable as a separate 2D/3D work and (2) would qualify as a PGS work when imagined apart; inquiry focuses on the feature, not on whether the remaining article stays fully functional |
| Whether objective evidence (designer intent or marketability) should be required | N/A (Varsity relied on perceptual/separability approach) | Star urged objective components: creator’s intent and marketability without utilitarian function | Court: Rejected adding intent/marketability requirements; not grounded in statute |
| Scope of protection if separable | Varsity: entitlement to prevent reproductions of the surface designs | Star: protecting designs would effectively copyright uniform shape/cut | Court: Only the two‑dimensional applied artwork is protectable; copyright does not extend to the uniform’s shape, cut, or dimensions |
Key Cases Cited
- Mazer v. Stein, 347 U.S. 201 (1954) (approved protection for sculptural works even when used as lamp bases; foundational for separability)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) (originality requirement for copyright)
- Bleistein v. Donaldson Lithographing Co., 188 U.S. 239 (1903) (courts should not substitute aesthetic judgments for copyrightability)
- Burrow‑Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (photographs and representations of useful articles are copyrightable as pictorial works but do not grant rights in the underlying useful article)
- Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir. 2010) (carvings engraved onto furniture found copyrightable as separable features)
- Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404 (11th Cir. 2015) (designs on laminated floor tiles found separable)