Cheerleading. To those unfamiliar with the art, the word “cheerleading” often conjures images of a gang of teenage girls in colorful, matching uniforms shouting various chants in unison to rile up a crowd. Let us not forget about the flips, tumbles, and other tricks for flair. However, cheerleading, especially within the competition realm, involves intense, choreographed routines filled with cheers, dances, and dangerous (but amazing) stunts and acrobatics. These routines are painstakingly practiced to perfection, and it goes without saying that ripping off another squad’s routine is extremely frowned upon. In fact, an entire movie (more or less) was dedicated to the denouncing of such a despicable practice.
While stealing choreography has been publicly condemned, the same cannot be said of blatantly copying uniform designs…until recently. Indeed, on March 22, 2017, the Supreme Court of the United States, in an opinion written by Justice Clarence Thomas, ruled in favor of Varsity Brands stating that cheerleader uniform designs constitute copyrightable material. More specifically, two-dimensional surface decorations, such as the designs found on cheerleader uniforms, can be protected by copyright. Star Athletica, LLC v. Varsity Brands, LLC, 580 U. S. ____ (2017).
Justice Thomas laid out a two-prong test from 17 U.S.C. § 101 used in reaching this decision, stating 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.’”
Because spotting a pictorial, graphic, or sculptural (PGS) feature on a useful article can be readily accomplished by simply looking at said useful article, the primary issue discussed involved the second prong of the test, which deals with independent existence.
One noteworthy point made by Justice Thomas involved “applied art” defined as art “employed in the decoration, design, or execution of useful objects”. Star Athletica argued that uniform designs and decorations cannot be protected by copyright because the law only protects “‘solely artistic’ features that have no effect whatsoever on a useful article’s utilitarian function.” However, the Court stated that the statute clearly protects two- and three-dimensional applied art, emphasizing that an artistic feature does not fall out of copyright protection just because the feature was “first created as a feature of the design of a useful article, even if it makes that article more useful.” This means the discussion of whether a cheerleader uniform design feature—which is considered applied art—satisfies the independent existence requirement is completely fair game.
In order to satisfy the independent existence requirement, a feature must be able to exist as its own artistic work when imagined away from the useful article. In other words, designs featuring, for example, combinations of stripes and chevrons found on cheerleading uniforms must be able to stand alone as artwork once separated from said uniforms. In contrast, if the feature in question is itself a useful article, then said feature cannot satisfy this requirement. The Court repeatedly asserted that the artistic designs on cheerleader uniforms did, in fact, qualify as applied art and do exist as artistic work when imagined away from the uniforms. As Justice Ginsberg stated in her concurring opinion, the designs are not of useful articles, but rather “pictorial or graphic works reproduced on useful articles” and therefore, fall within the protection of 17 U.S.C. § 101.
So does this mean we can now protect our all of our fashion designs? Not quite. Although big name designers throughout the fashion world have been waiting with baited breath for a favorable outcome with well-defined parameters, the opinion was less a guideline on how to apply the two-prong test and more a rejection of the various arguments offered by Star Athletica. If anything, the Court simply reinforced its current interpretation of 17 U.S.C. § 101. This does not mean the Court’s decision does not have a potentially huge impact in the industry. In fact, this decision opens the door to copyright protection and allows designers to attempt to secure rights outside of trademarks and design patents.
Indeed, it is important for copyright owners to properly identify and define the PGS features in a work of art and clearly show that the PGS features are works reproduced on useful articles and therefore, independently existing and separable. However, people should still pursue design patents and trademarks as they can provide those looking to secure comprehensive rights for their intellectual property with additional and likely more secure protection. How lower courts will define which PGS exist independently of an outfits utilitarian function remains to be seen.
Author: John Ahn, Patent Attorney