Break Out the Pom-Poms

Intellectual Property News

Client Alert


We’re all familiar with the sight. Your team is down in the final minutes of the game but within striking distance. The coach calls a timeout, huddling up the team. The fans are silent. Out runs the cheerleading squad:

“Two bits, four bits, six bits a dollar.

“All for the [insert favorite team], stand up and holler!”

Despite the considerable attention paid to the cheerleading squad, have you ever given any thought to the myriad chevrons, stripes, shapes and colors that make up the quintessential cheerleading uniform? What battles rage in the background of the $300 million market for cheerleader apparel? Well, wonder no more.

In Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., Varsity Brands and its affiliates—the undisputed captain of cheerleader apparel, controlling some 80 percent of the market—brought suit against freshman Star Athletica. Varsity filed suit immediately upon Star’s publication of its first catalog, alleging that Star infringed Varsity’s copyrights in five cheerleading uniforms.

The U.S. District Court for the Western District of Tennessee entered summary judgment in favor of Star, finding that Varsity’s cheerleading uniform designs did not qualify as “pictorial, graphic, and sculptural works” under Section 101 of the Copyright Act. 2014 WL 819422, *8-*9 (W.D. Tenn., Mar. 1, 2014). The district court ruled that the designs of the uniforms could not be separated from the uniforms’ “utilitarian function” and, therefore, were not subject to copyright protection. Id.

Lower court reversed on appeal

On appeal, the Sixth Circuit reversed, reasoning that the graphic designs of Varsity’s uniforms were “separately identifiable” from the uniforms themselves. 799 F. 3d 468, 491 (6th Cir. 2015). The Sixth Circuit concluded that the uniforms’ designs “and a blank cheerleading uniform can appear ‘side by side’—one as a graphic design, and one as a cheerleading uniform.” Id. (quoting Compendium of U.S. Copyright Office Practices §924.2(b) (3d ed. 2014)). Because the designs could conceivably be incorporated on some medium other than a functional cheerleading uniform, the court found that the designs were “capable of existing independently” of the uniforms and, thus, subject to copyright protection. Id. at 491-92.

Star takes it to Supreme Court

Star appealed the Sixth Circuit’s decision to the U.S. Supreme Court. The Supreme Court was tasked with determining whether the arrangements of lines, chevrons, and shapes on Varsity’s cheerleading uniforms are eligible for copyright protection as separable design features of the uniforms. 508 U.S. ___, at 4 (2017). Section 101 of the Copyright Act requires a “separability analysis” for any “pictorial, graphic, or sculptural features” incorporated into the “design of a useful article.” Id. at 5 (quoting 17 U.S.C. § 101).

Unsurprisingly, a cheerleading uniform is a “useful article.”  17 U.S.C. § 101. It is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Id. Pursuant to Section 101, a “pictorial, graphic, or sculptural feature” incorporated into the “design of a useful article” may be protectable under copyright only if it (1) “can be identified separately from” and (2) is “capable of existing independently of, the utilitarian aspects of the article.” Id.

Application of the “separability analysis”

The first element of the test is easily satisfied. One must show only that the useful article in question contains “some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” 508 U.S. ___, at 7. “The focus of the separability inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.” Id. at 13.

The second element—independent existence—is more onerous. To satisfy this requirement, one must show that the separately identifiable design feature “has the capacity to exist apart from the utilitarian aspects of the article.” Id. at 7. In other words, the separately identifiable design feature must qualify in its own right as a pictorial, graphic, or sculptural work pursuant to Section 101. See id.

If the design feature cannot exist as a pictorial, graphic, or sculptural work separate from the useful article, then it was never a design feature in the first place. Rather, the feature was a utilitarian aspect of the article ineligible for copyright protection. Id.

Together, Sections 101 and 113(a) of the Copyright Act extend copyright protection “to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles.” Id. at 8 (emphasis added). It is irrelevant to the Court’s inquiry whether the design at issue was originally created as a freestanding work of art or as part of a useful article. Id. at 9 (citing Mazer v. Stein 347 U.S. 201 (1954)). Simply because a work of art conforms to the confines of its medium, e.g., “[a] fresco painted on a wall, ceiling panel, or dome,” the work does not lose its protectability.

The ultimate separability question, then, is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article.

Id. at 8.

Supreme Court’s holding

The Supreme Court summarized its holding as follows: “[A] feature of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” Id. at 10. Applying its test to the cheerleading uniform designs at issue, the Court found that “imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.” Id. Having satisfied both the separate identification and independent existence requirements, the Court affirmed the decision of the Sixth Circuit.

How the decision may affect copyright law

It is important to note that the Court’s decision in Star Athletica did not resolve the question of whether the separately identifiable cheerleading uniform designs are, in fact, copyrightable. The Court expressed no opinion on whether the designs qualify for copyright protection or whether any prerequisite for copyright registration has been satisfied. See id. at n.1.

The Court’s decision also does not change the law regarding copyrightability of useful articles themselves. Varsity cannot prevent anyone “from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in th[e] case appear.” Id. at 12. Varsity can “prohibit only the reproduction of the surface designs in any tangible medium of expression—a uniform or otherwise.” Id. Useful articles remain ineligible for copyright protection. Id. “[A] shovel, like a cheerleading uniform, even if displayed in an art gallery,” cannot be copyrighted. Id. at n.2.

The Court’s decision, however, may usher in a new era in the application of copyright law to fashion. If an artistic feature of a piece of clothing or other apparel would be eligible for copyright protection on its own, that feature will not lose its protectability simply because the medium on which it is affixed, or even on which it was first created, is a useful article.