Author: Meg Franklin, Associate Member, University of Cincinnati Law Review
In a 2000 film called Bring It On, a high school cheerleading squad captained by Kirsten Dunst was accused of stealing cheer routines. Seventeen years later, the spotlight is again on cheerleading. Yet, instead of copied cheer routines, The Supreme Court is concerned with allegedly copied cheerleading uniform designs.
In Star Athletica v. Varsity Brands, the Supreme Court recently granted certiorari to end disagreement among lower courts over the “separability” test in copyright law. Since a bedrock principle of copyright law is that only expression can be copyrighted, this test directs courts to separate the expressive elements from the utilitarian elements of an article in determining . After refining this test, Supreme Court ruled the designs on cheerleading uniforms were eligible for copyright protection. This result was noteworthy because many courts and the United States Copyright Office have copyrights for clothing designs. Clothing designs were deemed inseparable from the usefulness of the clothing. Some commentators may interpret this holding as a message to fashion designers and designers of other useful articles to “bring it on” and enforce their copyrights. However, time will tell whether the fast-paced fashion industry will use litigation to protect their original designs.
Copyrights for Useful Articles
The Court’s decision in Star Athletica v. Varsity Brands— whether Varsity Brands held a valid copyright—was dependent on whether the designs on the cheerleading uniforms could be classified as copyrightable subject matter. In a copyright infringement case, a threshold issue is whether a valid copyright exists, because some articles are not deemed copyrightable subject matter. Under the Copyright Act of 1976, copyrightable subject matter is limited to original works fixed in any tangible medium of expression such as a “pictorial, graphic, or sculptural work.” Thus, a tenet of copyright law is that a copyright protects expression but not ideas. In Baker v. Selden, the Court elaborated that a copyright protects an author’s original expression but not the utilitarian ends to which expression may be put. Congress later codified this holding in §102(b) of the Copyright Act. Yet, the difficultly in determining the boundary between the “original expression” and the “utilitarian ends” has produced a body of law regarding “useful articles.”
Useful articles are not copyrightable subject matter,“to qualify as a pictorial, graphic, or sculptural work on its own, the feature cannot itself be a useful article.” In the leading case of Mazer v. Stein, the Court held that the statuette of a dancer was copyrightable even though it was used as the base of a lamp. There, the lamp itself was a useful object, but the design of the stand could be protected under copyright because its design could be “conceptually” separated. Congress later codified this holding in § 101 and § 113(a) of the Copyright Act of 1976. Under § 101, “the design of a useful article” can be copyrightable “only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” The requirement to identify design “separately from” utility in § 101 has led to the development of the “separability test.”
The Long-Awaited Separability Test
The House Report at the time of the codification of Mazer in § 101 and § 113(a) of the Copyright Act of 1976, suggested that separability may occur either “physically or conceptually.” In response, courts diverged in their development of “physical separability” and “conceptual separability” tests. Basically, physical separability exists when one could physically remove a design from the useful article without impeding the function of the article. On the other hand, conceptual separability exists when one can imagine the design elements apart from the useful elements of the article. However, courts have not applied these test consistently. In fact, before the Court granted certiorari in Varsity Brands, Judge McKeaugue ended his dissent with a plea to the Supreme Court or Congress: “It is apparent that either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design. The law in this area is a mess—and it has been for a long time. . . . until we get much-needed clarification, courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law.”
Fortunately for those frustrated with the former iterations of the separability test, Justice Thomas clarified with a textual interpretation of the Copyright Act. The majority reasoned that based on the language of § 101, there is a “separate identification” requirement and an “independent-existence” requirement. It was not difficult for the Court to “look at the useful article and spot some two- or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities.” The cheerleading uniform’s design with shapes, colors, and lines satisfied this “separate identification” requirement. Justice Thomas’s majority explained the independent existence requirement demanded “the feature must be able to exist as its own pictorial, graphic, or sculptural work as defined in §101 once it is imagined apart from the useful article.”
This imagination test may seem reminiscent of the “conceptual separability” of past cases. Yet, the Court expressly rejected this prior interpretation of § 101 by explaining, “[b]ecause we reject the view that a useful article must remain after the artistic feature has been imaginatively separated from the article, we necessarily abandon the distinction between “physical” and “conceptual” separability, which some courts and commentators have adopted based on the Copyright Act’s legislative history.” Instead, “[t]he ultimate separability question . . . 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.” In applying this test to the cheerleading uniform designs, the Court found the uniforms met the threshold requirement of copyrightable subject matter.
New Role for Copyright in Clothing and Fashion
Besides clearing up the confusion regarding the separability test, some commentators believe that Star Athletica v. Varsity Brands will pave the way for copyrights in many new areas. The stark contrast between prior application of the law of useful articles and the pronouncement in Varsity Brands can be illustrated by the Copyright Office’s existing guidelines. For example, 924.3(A) of the Copyright Office’s Compendium states, “Clothing such as shirts, dresses, pants, coats, shoes, and outerwear are not eligible for copyright protection because they are considered useful articles. This is because clothing provides utilitarian functions, such as warmth, protection, and modesty. As a result, the U.S. Copyright Office will not register a claim in clothing or clothing designs.”  Contrast that guideline with the recent Ninth Circuit ruling which upheld willful copyright infringement on a fabric pattern.
Although only time will tell, some predict this ruling will have the largest impact on clothing with longer shelf-lives such as the costume and wedding industry. Due to the potential for long-term returns, these industries may justify the cost of litigation more easily than industries that have styles with shorter shelf-lives. Therefore, litigation may be impractical for companies designing clothes in faster-paced markets.
The Court’s ruling in Star Athletica v. Varsity Brands changes the traditional understanding of copyrights in clothing designs. It provides much-needed clarification on the separability test for useful articles. Additionally, it could provide wider access to copyrights for useful articles, like clothing, not formally understood as copyrightable subject matter. Since the Copyright Office has explicitly disallowed copyrights for clothing, it is likely that new guidelines will be issued to reflect the holding in Star Athletic v. Varsity BrandsFor example, the Copyright Office will have to remove § 924.3(A) of its Compendium because clothing designs are copyrightable subject matter under Star Athletic v. Varsity Brands. Yet, only time will tell whether all areas of the clothing industry will take advantage of this new avenue to copyrightability.
 See, Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026 (Mar. 22, 2017).
 Infra, n.8.
 Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026 (Mar. 22, 2017).
 See, infra, n. 37.
 Id. at *10-11.
 4 Nimmer on Copyright § 13.01 (2017).
 Congress’s authority to enact the Copyright Act is found in the United States Constitution: “The Congress shall have power … To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries[.]” U.S. Const. art. I, § 8, cl. 8.
 “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: [listing a non-exclusive list of eight copyrightable subject matter categories.]” 17 U.S.C. § 102(a).
 Baker v. Selden, 101 U.S. 99 (1879).
 “In no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work.” 17 U.S.C. § 102(b).
 Supra, n. 24.
 “[A] ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C.S. § 101 (LexisNexis, Lexis Advance through PL 115-14, approved 3/27/17).
 Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026, at *17 (Mar. 22, 2017). Also,
 347 U.S. 201, 74 S. Ct. 460 (1954).
 Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026, at *12 (Mar. 22, 2017).
 17 U.S.C.S. § 101 (LexisNexis, Lexis Advance through PL 115-14, approved 3/27/17).
 Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026, at *18-19 (Mar. 22, 2017).
 H. R. Rep. No. 94-1476, p. 55 (1976).
 1 Nimmer on Copyright § 2A.08.
 Id. See, also, ARTICLE: THE COPYRIGHT/PATENT BOUNDARY, 48 U. Rich. L. Rev. 611 (“The sheer number of tests applied by the courts and proposals suggested by scholars for the reform of copyright’s useful article doctrine is overwhelming.”)
 Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 496-97 (6th Cir. 2015) (McKeague, J., dissenting; internal citations omitted).
 “The statute provides that a ‘pictorial, graphic, or sculptural featur[e]’ incorporated into the ‘design of a useful article’ is eligible for copyright protection if it (1) ‘can be identified separately from,’ and (2) is ‘capable of existing independently of, the utilitarian aspects of the article.’ Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026, at *16 (Mar. 22, 2017).
 See, id.
 Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026, at *27 (Mar. 22, 2017).
 Id. at *18.
 Id. at *21. See, also, Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 U.S. LEXIS 2026, at *21 n.1 (Mar. 22, 2017) (“We do not today hold that the surface decorations are copyrightable. We express no opinion on whether these works are sufficiently original to qualify for copyright protection, see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 358-359, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991), or on whether any other prerequisite of a valid copyright has been satisfied.”)
 See, e.g., Sandra Aistars, Courthouse Steps: Fashionable Copyright Law in the U.S. Supreme Court – Podcast, The Federalist Society (April 5, 2017), http://www.fed-soc.org/multimedia/detail/courthouse-steps-fashionable-copyright-law-in-the-us-supreme-court-podcast.
 Compendium of U.S. Copyright Office Practices, 3rd Ed. (Dec. 22, 2014), https://www.copyright.gov/comp3/chap900/ch900-visual-art.pdf.
 Unicolors, Inc. v. Urban Outfitters, Inc. , 2017 BL 107988, 9th Cir., No. 15-55507, 4/3/17.
 Supra, n. 33.