Since 1870, copyright protection has been available for “works of the fine arts.”1 Through the Copyright Act of 19762 (the Act), Congress expanded the scope of copyright to include aesthetic features of useful objects.3 The design of a so-called “useful article”4 may be copyrighted only if the object’s useful and aesthetic features are separable.5 Since the statute was enacted, between eight6 and ten7 approaches for defining separability proliferated amongst scholars and lower courts, resulting in “inconsistent holdings.”8 Last Term, in Star Athletica, L.L.C. v. Varsity Brands, Inc.,9 the Supreme Court clarified the separability test and held that the designs on a cheerleading uniform were separable from the uniform’s function as clothing and were copyrightable under the Act.10 While a much-needed clarification of this area of law, the opinion may not eliminate lower courts’ variations in separability analysis because it contradicts itself regarding the inherent separability of surface designs, does little more than restate the statute, and flinches from delving into the visual nature of the question.
Star Athletica (Star) and Varsity Brands (Varsity) were in the business of marketing and selling uniforms and gear for athletic teams, including cheerleading squads.11 Varsity held copyright registrations for three of its cheerleading uniform designs as “2-dimensional artwork” and for two as “fabric design (artwork).”12 When designing a uniform, Varsity’s employees usually drew two-dimensional images combining design elements.13 Customers chose among the “design concept[s]” in Varsity’s catalog and could select specific “shape[s], colors, and braiding for the uniform[s].”14 After Star published a catalog of cheerleading uniforms with designs similar to Varsity’s copyrighted designs, Varsity sued, alleging infringement of their exclusive rights to reproduce, display, and distribute their copyrighted designs.15
After discovery, both parties moved for summary judgment.16 At issue was whether Varsity owned a valid copyright in the designs of the cheerleading uniforms and, in particular, whether the designs were copyrightable subject matter.17 Since the uniforms, as clothing, “possess both utilitarian and aesthetic value,” they were useful articles.18 Consequently, their useful features — their “shape, style, cut, and dimensions” — could not be copyrighted.19 But, the design on the clothing’s fabric may receive copyright protection as a “pictorial, graphic, or sculptural [(PGS)] work only if, and only to the extent that,” the PGS and utilitarian aspects are separable.20 Separability has two elements: separate identification and independent existence.21 Judge Cleland reasoned that the former “implies conceptual severability” and the latter “physical separability.”22 He considered the relationship between the garments’ utilitarian function and aesthetic features: because the uniforms were no longer useful for “cloth[ing] the body in a way that evokes the concept of cheerleading” without the chevrons, lines, and colored panels, the features were not conceptually separable.23 He also held that the designs were not physically separable, because taking them off of the fabric did “not remove their association as cheerleading uniforms.”24 As a result, the designs were not copyrightable, and Star’s motion on the copyright infringement claims was granted.25
The Sixth Circuit reversed and remanded.26 Writing for the majority, Judge Moore27 first held that the Sixth Circuit would defer to the Copyright Office’s determination that a design is copyrightable, as shown by a valid copyright registration.28 Deference was due given the Office’s expertise and experience with useful article analyses, the training given to its employees in applying the statute, and the “sound legal reasoning” of its interpretation; thus, the district court had erred in not deferring to the Copyright Office’s determination.29
Judge Moore then moved on to the separability analysis. She reviewed the myriad approaches to separability followed by other circuits and proposed by scholars but declined to follow any one approach.30 She then laid out a new method of separability analysis for the Sixth Circuit.31 A court must first determine that the design in question is PGS; second, confirm that the object is a useful article; and third, pin down the article’s permissible “utilitarian aspects” under the Act.32 A court must ensure fourth, that the utilitarian and PGS features are separately identifiable and fifth, that the utilitarian and PGS aspects can exist independently of one another.33 The final inquiry is guided by the “objectively necessary” and “design-process” approaches adopted by other courts.34 Under the objectively necessary approach, if an article’s utilitarian features function without the PGS design, the design can exist independently.35 To inform this determination, courts can use the design-process approach, which considers evidence from the designer about “which components of the design are essential to the functionality of the useful article.”36
Under this test, the uniform designs were copyrightable subject matter.37 The stripes and chevrons were PGS and designs of useful articles, uniforms, which have the utilitarian functions of athletic wear.38 They could be separately identified, since the uniform’s useful features were not affected by the absence of stripes and chevrons and the design and the clothing could appear “side by side.”39 Finally, the independent existence requirement was met, in part because the designs could and did appear in other media, namely other types of clothing.40
Judge McKeague dissented.41 He diverged from the majority on the third step, the useful functions that the court could permissibly consider.42 Pointing out that the majority’s analysis depends on the level of generality at which a “function” is articulated, he would have defined it more narrowly43: “to clothe the body ‘in an attractive way for a special occasion.’”44 Since the uniforms’ design rendered them more useful for that purpose, Judge McKeague believed that the utilitarian and aesthetic features were not separable.45
The Supreme Court affirmed.46 Writing for the Court, Justice Thomas47 clarified the separability analysis, sweeping away the lower courts’ tests.48 The Court held that to receive copyright protection as a PGS work, an aesthetic feature of a useful article must be perceivable as a work separate from the useful article and be protectable as a PGS work “on its own or . . . in [another] tangible medium” if “imagined apart.”49 The first inquiry is simple, corresponding to the separately identifiable prong; the second, corresponding to the independent exis-tence prong, is “more difficult to satisfy.”50 The Court’s solution was supported by the plain text of section 101 and the Act as a whole, since sections 101, 106, and 113(a) provide that a PGS design receives copyright protection, no matter if it is fixed first as part of a useful article or as a stand-alone work.51 Additionally, the approach was consistent with the history of the statute, because it did not overrule Mazer v. Stein,52 the opinion that informed the statute’s text.53 There, the Court held that a lamp base in the shape of a human dancer was copyrightable subject matter under the 1909 copyright regime.54 The Copyright Office implemented this holding through its regulations, and Congress lifted the language from those regulations in enacting the 1976 Act.55 Since, in Mazer, the lamp’s usefulness without the statuette did not factor into the analysis, whether an article was functional without the design had no bearing on its copy-rightability in Star Athletica either.56
The uniforms passed this test. Since the chevrons and lines were perceivable, the first prong was satisfied.57 The second prong was met because the chevrons and lines, “applied in another medium,” would be two-dimensional works of art that “would not replicate the uniform itself.”58 The Court disposed of counterarguments and alternative tests raised by the parties as not grounded in the text of the statute.59 Additionally, any reliance on the distinction between physical and conceptual separability was misplaced, because the “text indicates” the exercise is conceptual.60 Finally, the Court concluded that its decision was not contrary to Congress’s intent to preclude copyright protection for clothing, because Varsity’s copyright was in only the uniform’s decorations, and not its “shape, cut, and physical dimensions.”61
Justice Ginsburg concurred in the judgment.62 Since Varsity’s copy-right registrations were not in the uniform, but in a fabric design reproduced on a uniform, she argued the copyright was not in a design of a useful article.63 Thus, separability analysis was not necessary, and the designs were properly copyrighted.64 Justice Breyer dissented.65 Accepting the majority’s test, Justice Breyer disagreed with their framing and would have held that the designs could not be perceived separately.66 For Justice Breyer, the majority’s articulation suffered from vagueness: “virtually any industrial design” could satisfy the majority’s test and “be imagined as a ‘two- or three-dimensional work of art.’”67 Justice Breyer turned to illustrations and examples to answer whether “the design picture[s] the useful article.”68 Applying the uniforms’ designs to, for example, a canvas creates a painting of a uniform; the designs “replicate the cut and style of the uniforms.”69 Thus, for the dissenters, they are not separable, and not protectable by copyright.
Scholars and courts have proposed and applied many approaches for answering the separability question, resulting in different tests in different circuits and for different articles.70 Star Athletica provides much needed focus by eliminating the competing tests and the judicial discretion and subjectivity they invited. However, the opinion replaced that confusion with confusion of its own. It explicitly denied that it expanded the reach of copyright law to surface decorations that met the other statutory requirements, but the opinion seems to do just that. Additionally, it lacks cues to guide lower courts in their analyses: it relied too heavily on plain text in an area begging for descriptive language and eschewed analogy in favor of reducing judicial discretion. Consequently, Star Athletica may not provide the clarity that the courts or industry need.
Since the enactment of the Act in 1976, courts and scholars have deployed many approaches to interpret separability’s separately identifiable and “capable of independent existence” elements.71 These approaches considered factors as disparate as how likely it is that “some significant segment of the community” would buy the PGS feature divorced from its useful purpose,72 how useful the object remains once separated from the PGS features,73 and how much the designer took functional and aesthetic considerations into account.74 The tests have been criticized for allowing judges’ artistic judgment to enter into the analysis,75 contrary to the Court’s long-standing admonition that judges are not art critics,76 and for looking for features or qualities, like marketability or the artist’s methods, that “reflect . . . a merger” between the aesthetic and useful features, “rather than looking for the merger itself” by determining whether it is in fact possible to imagine the design without the function, and vice versa.77 Star Athletica knocks out these approaches and makes the landscape more predictable for parties, who need not guess which of eight to ten tests a court will follow.
The Court’s test improves on prior approaches by avoiding inquiry into the article’s function and minimizing opportunity for judicial discretion. First, Justice Thomas resolved the flaw Judge McKeague identified in the Sixth Circuit’s approach, that the copyrightability of the PGS feature would depend on how specifically the article’s utility is defined.78 There, the outcome turned on the fact that the uniform’s purpose was to cover the body rather than to cover the body for cheerleading.79 By focusing on the design, rather than the article,80 the Court sidestepped the difficulties the Sixth Circuit encountered in determining how much more or less useful the chevrons made the uniforms and minimized semantic and philosophic disagreements.81
Second, the Court’s analysis eliminates subjective aspects of the other separability tests. For example, the primary-subsidiary approach allowed judges to find separability when, in their artistic judgment, the aesthetic feature was primary.82 Thus, the court in Kieselstein-Cord v. Accessories by Pearl, Inc.83 believed that the functionality of the belt buckles was subsidiary to their nature as body ornamentation and found separability.84 Similarly, the design-process approach permitted the subjective intent of the artist, and the judge’s understanding of it, to control the analysis.85 Therefore, in Brandir International, Inc. v. Cascade Pacific Lumber Co.,86 the artist’s decision to adapt his sculpture into a more useful and functional bike rack sank the claim for separability.87 Overall, Star Athletica reduces opportunity for judicial discretion and could yield more predictable outcomes.
Nonetheless, this opinion may not eliminate variations in the application of separability analysis. First, the Court functionally expanded copyright protection to surface decorations while denying doing so. Justice Thomas rejected Varsity’s argument that surface designs are “inherently separable” as designs on a useful article, rather than designs of a useful article.88 However, the Court noted that other clothing bearing the design and a painting of the design would not “replicate” the uniform.89 Thus, the Court set a high bar for what would create a replica of an article and established a framework that ensures surface decorations will nearly always be separable. These dicta imply that the independently existing work can have the shape and look of the article,90 evoke the same concepts,91 and even perform the same function and still be separable.92 And, the Court mentioned only one example that would fail this prong: a car, imagined as a three-dimensional cardboard model, would not receive copyright protection.93 This example does not explain when a useful article’s surface decoration will not be copyrightable, as it pertains to a three-dimensional object. The tension in this apparent contradiction could lead to inconsistent applications of Star Athletica.
Additionally, the Court may have invited various interpretations of the opinion by not providing more guidance on how the text of § 101 should be construed. The Court’s test does little more than restate the statute’s language. “[F]eatures that can be identified separately”94 becomes “feature[s] [that] can be perceived as a . . . separate” work.95 “[F]eatures that . . . are capable of existing independently”96 becomes “feature[s] . . . [that] would qualify as a protectable . . . work.”97 Paraphrases are ordinarily helpful, as they provide other ways of thinking through a question. But the number of approaches developed by lower courts renders it “obvious” that there was no settled way to understand the statute’s text, how it should be applied, or under what standard.98 A gloss on the text will likely not resolve those questions.99 Indeed, the district court knew that the difficulty was not in the text, but in determining the “proper standard to apply.”100 The Sixth Circuit created an “approach” to the separability analysis, laying out “a series of questions . . . grounded in the text of the Copyright Act.”101 It believed it would be most helpful to instruct courts on the precise questions. The Court does not offer such an approach.
The Court’s sparse use of analogies and description may also make application of the test more difficult. The majority considered only the text: the holding was grounded in the provision, the statute as a whole, and the history of the provision’s enactment.102 It relied on dictionaries rather than images.103 The application of the test was cursory, with only one paragraph explaining that the statute’s requirements were satisfied, followed by two analogies.104 In contrast, Justice Breyer’s dissent contemplated multiple scenarios to illustrate how his framing could be deployed across multiple fact patterns.105 Additionally, both lower courts here evaluated the facts and reasoning of other courts,106 and courts and scholars usually discuss examples in detail.107 Of course, the Supreme Court need not parse lower court decisions or defend its consistency with them.108 Nonetheless, the Court could have recognized, from these many examples, that visual analyses and illustrative analogies to like and unlike objects are helpful in copyright law in general and separability analysis in particular, and adjusted its approach accordingly. Because useful articles are three-dimensional objects, and because, as Star Athletica illustrates, aesthetic and useful features can be difficult to distinguish, description of how a test would be applied across situations is an important feature of separability analysis. Had the Court discussed the visuals, it could have ensured a more predictable separability inquiry.
The Court’s decision not to engage in descriptive analysis may be an attempt to ensure that judges’ aesthetic preferences do not bleed into the separability test. This concern, which forms the basis of many critiques in this area, is valid given the principle of aesthetic neutrality, which is founded in the courts’ lack of expertise109 and fears of judicial paternalism regarding what qualifies as art.110 Any separability approach must balance the need for aesthetic neutrality with the need for an implementable standard. But here, aesthetic neutrality and textualist analysis are privileged at the expense of clarity. Even though the test minimizes judicial discretion, the Court turned a blind eye to the challenges facing lower courts.
The reasoning in Star Athletica is sound and reduces opportunities for courts to consider subjective factors. But the Court’s articulation of its ruling lacks clarity and detail and could create its own confusion. In announcing the separability test, the opinion did little more than paraphrase the statute, overlooking the lower courts’ various ways of implementing that language. Additional means of approaching the text, through analogy and description, were not put forward to clarify the statute’s meaning. And, contradictions between the different parts of the Court’s analysis complicate the final holding. Even here, the majority and dissent fundamentally agreed on the meaning of the statute’s text, but preferred different ways of framing the question the statute asked and came to two different conclusions as to the result. With all this considered, lower courts may formulate their own glosses and approaches to Star Athletica’s separability analysis, resulting in as much unpredictability in the landscape as preceded this opinion.