Practitioner Perspective: Star Athletica v. Varsity Brands
Today, the Supreme Court held that Varsity Brands is entitled to copyright protection in the various two-dimensional designs featured on its cheerleading uniforms in Star Athletica v. Varsity Brands.
Jeffrey Cadwell is a partner at the international law firm Dorsey & Whitney who advises clients on the availability, registrability, and strength of proposed trademarks in both the United States and abroad, and assists clients with developing strategies for protecting and enforcing their trademark rights. He also counsels on copyright issues, and obtains copyright registrations for clients. Of the decision today he says:
“The key takeaway is confirmation that designs featured on useful articles are protectable under copyright law if they can be perceived independently as a 2-D or 3-D work of art and if they otherwise would qualify for copyright protection. Accordingly, such copyright owners can prohibit reproduction of the designs not only on similar useful articles but also in any other medium of expression. The protection afforded under copyright does not extend, however, to preventing anyone from manufacturing the useful article without any of the design features present.
The Supreme Court today crystallized the appropriate test for protection by holding that ‘the 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, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.’ The Supreme Court rejected the oft-cited distinction between conceptual separability and physical separability, and instead said the language of the Copyright Act supports conceptual separability. This is because separability does not require the underlying useful article to remain.
The approach taken by the Supreme Court is consistent with both its past decision in Mazer v. Stein, which was decided under the 1909 Copyright Act, and with the language of the current Copyright Act, specifically Sections 101 and 113(a).”