Practice Tips for Copyright Owners in the Wake of Star Athletica v. Varsity Brands

Article co-written by Yuri Levin-Schwartz, Ph.D., a law clerk at MBHB.

After considering almost a year’s worth of substantive briefing (including fifteen separate amicus briefs), oral argument, at least ten distinct tests employed in courts throughout the country, as well as numerous novel tests proposed during the pendency of this appeal, the Supreme Court delivered a rare victory for many intellectual property (IP) owners in its recent decision: Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017). Before sounding the victory trumpet for these IP owners, however, it is worth considering the rarified air in which this Supreme Court’s analysis occurred—the last time the Supreme Court addressed the impact an article’s usefulness has on its ability to be copyrighted was in 1954.[1] Here, we attempt to unpack what little clear, practical guidance may be garnered from this decision.

The State of the Problem

In defining the line between copyrightable works and unprotectable, utilitarian elements of industrial design, courts routinely ask “whether the aesthetic features of a useful article can be identified separately from, and can exist independently of, the work’s utilitarian functions.”[2] Articulating and evaluating the exact parameters and applicability of this inquiry, the “separability test,” however, has proven to be anything but straightforward.

For instance, the Sixth Circuit, acknowledging that “[c]ourts have struggled mightily to formulate a test” to accurately evaluate the separability test, enumerated and discussed nine different tests aimed at doing just that before articulating and applying its own newly-minted, five-part test directed at doing the same.[3] Thus, while the details of these various tests will not be discussed at any length here, it is safe to say that the Supreme Court faced a tall task in evaluating the state and merits of the judicial landscape surrounding this inquiry—even before the first brief was filed.

The Solutions Proposed

Piling on to the confusion, in its briefing before the Court, Star Athletica denounced all of the approaches discussed, including the one promoted by the Sixth Circuit, and instead proposed its own four-part, strictly-construed separability analysis based on the statutory language of § 101 of the Copyright Act[4] that would have required a court to consider:

  1. “whether the pictorial, graphic, or sculptural work is a design of a useful article . . . [which] are presumptively not entitled to copyright protection . . . and only [so] if that feature satisfies the separability test, with doubts resolved against copyrightability;”[5]
  2. that “[t]he presumption against extending copyright protection to utilitarian objects requires courts to identify all of the article’s inherent, essential, or natural functions,” further considering that “[t]he uses for which an article is marketed is strong evidence of its functions;”[6]
  3. “whether a feature of a useful article can be recognized as a unit by itself, apart from the article’s utilitarian aspects . . . because it is purely artistic,” further assuming that “[i]f the answer is no, the feature cannot be copyrighted;”[7] and
  4. “whether the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works,” which further requires, at least in part, that “the feature cannot advance the utility of the article, and the article cannot depend on the feature for its utility,” because “[i]f the feature is even slightly utilitarian, it cannot be copyrighted.”[8]


Furthermore, in a somewhat odd choice of proposed construction, Star Athletica suggested that in “close cases” under this four-part test, courts “should follow [the] analogous approach in the trade-dress arena and decline to provide copyright protection to the useful article’s design features based on Congress’s choice not to extend the copyright monopoly to industrial designs.”[9]

In response, Varsity Brands criticized Star Athletica’s approach as an “indeterminate hodge-podge of lower-court tests,” all flawed in one aspect or another, and the sum of which would surely be as well.[10] Accordingly, Varsity Brands reiterated the longstanding applicability and practicality of the Copyright Office’s “side-by-side” analysis for evaluating separability, which asks:

  1. whether “an artistic feature can be ‘identified separately from’ the useful article’s practical features,” in essence, whether the artistic feature is ‘capable of being visualized—either on paper or as free-standing sculpture—as a work of authorship that is independent from the overall shape of the useful article’;”[11] and
  2. whether “the artistic feature is ‘capable of independent existence apart from” the utilitarian features,” that is, whether “the artistic feature can ‘exist side by side’ with the useful article after being separated, and still be ‘perceived as [a] fully realized, separate work[].’”[12]


The Path Taken

The Supreme Court, perhaps unsurprisingly considering the landscape with which it was presented, elected to articulate and apply its own separability test. With Justice Thomas writing for the Court, the Court held that an “artistic” feature of a claimed design of a useful article is eligible for copyright protection only if the feature:

  1. “can be perceived as a two- or three-dimensional work of art separate from the useful article;”[13] and
  2. “would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.”[14]


Furthermore, the Court further clarified that because here, “one can identify the decorations [on the useful article] as features having pictorial, graphic, or sculptural qualities,” and “if the arrangement of colors, shapes, stripes, and chevrons on the surface of the [article] were separated from the [article] and applied in another medium—for example, on a painter’s canvas—they would qualify as ‘two-dimensional … works of … art,’ . . . [t]he decorations are therefore separable from the [article] and eligible for copyright protection.”[15]

And, as is the case in this oft-polarized court, the final count came down 6-2, with Justices Breyer and Kennedy dissenting—not on the basis of an incorrect test being articulated, but instead on its incorrect application to the facts of this case.


Simple enough, right? Likely not—especially for courts attempting to apply the simple, but seemingly ambiguous, parameters of this test in the first instance. For example, courts are likely to struggle, just as the Court seemed to, with what “perceived” actually means in the context of the first prong. To Justice Thomas, perception seems to be more clearly defined in terms of what it is not.[16] Although this type of Justice Stewart-esque analysis may produce swift, seemingly equitable, results, in one case, it will be difficult for courts to interpret and apply to facts in others.[17] This confusion is also likely to only be compounded for those courts faced with a depth of diverse, distinct jurisprudence to the contrary and a dearth of information on how to accurately (or adequately) apply this analysis moving forward.

Thus, what are IP owners left to do in the wake of Star Athletica v. Varsity Brands? A couple of thoughts, particularly relevant to those in the fashion, music, and other apparel industries:

  1. Copyrights are cheap to prosecute (relative to, say, patents) and it seems easier to obtain protection now than it did pre-Star Athletica—particularly if you are seeking protection for clearly articulated design choices (e.g., colors, patterns, and other shapes (aside from those of the article itself))— so in this climate, file aggressively and file often; and
  2. Regardless of all the tests proposed in this appeal, because the Supreme Court seemed to pay the most deference to the analysis already articulated and routinely applied by the Copyright Office, applicants navigating the waters of that analysis during application should do so carefully—as it appears to be even more valuable for the copyrights you plan on enforcing moving forward.

[1] See Mazer v. Stein, 347 U.S. 201 (1954).

[2] See Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separability in American Copyright Law, 69 Ohio St. L.J. 109, 109-10 (2008) (citations omitted) (“Of the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectible pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design.”).

[3] See generally Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 484-93 (6th Cir. 2015), cert. granted in part sub nom. Star Athletica, L.L.C. v. Varsity Brands, Inc., 136 S. Ct. 1823, 194 L. Ed. 2d 829 (2016), and aff’d sub nom. Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

[4] 17 U.S.C. § 101.

[5] Brief for Petitioner at 38, Star Athletica, LLC v. Varsity Brands, Inc. (July 15, 2016) (No. 15-866).

[6] Id.

[7] Id.

[8] Id. at 38-39.

[9] Id. at 39 (citing Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 215 (2000) (“[t]o the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning”—which of course has little no meaning in the context of determining copyrightability).

[10] Brief for Respondents at 2, Star Athletica, LLC v. Varsity Brands, Inc. (Sept. 14, 2016) (No. 15-866).

[11] Id. at 24.

[12] Id.

[13] 137 S. Ct. 1002, 1016 (2017).

[14] Id.

[15] Id. at 1012. It is also worth noting that the Court expressly refined the extent of its holding by noting  “[t]o be clear, the only feature of the cheerleading uniform eligible for a copyright . . . is the two-dimensional work of art fixed in the tangible medium of the uniform fabric,” thus “[e]ven if respondents ultimately succeed in establishing a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear.” Id. at 1013.

[16] The term “perceived” appears twice, substantively, in the majority opinion—both times in the context of does not influence perceiving works of art. See id. at 1015 (“The statute’s text makes clear, however, that our inquiry is limited to how the article and feature are perceived, not how or why they were designed.”; id. at 1013 n. 2 (“A drawing of a shovel could, of course, be copyrighted. And, if the shovel included any artistic features that could be perceived as art apart from the shovel, and which would qualify as protectable pictorial, graphic, or sculptural works on their own or in another medium, they too could be copyrighted. But a shovel as a shovel cannot.”). Furthermore, it seems that Justice Breyer’s criticisms of Justice Thomas’s artistic perception, alone, form the basis of his dissent. See, e.g., id. at 1030 (“Even applying the majority’s test, the designs cannot ‘be perceived as … two- or three-dimensional work[s] of art separate from the useful article.’”).

[17] See Jacobellis v. State of Ohio, 378 U.S. 184, 197 (1964) (“I shall not today attempt further to define the kinds of material I understand to be embraced within that shorthand description [pornography]; and perhaps I could never succeed in intelligibly doing so. But I know it when I see it, and the motion picture involved in this case is not that.”).



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