image: Cheerleader mag image: Cheerleader mag

After going before the U.S. Supreme Court in October for oral arguments, Star Athletica v. Varsity Brands, the much-anticipated copyright dispute over cheerleading uniforms, has been decided by the Supreme Court. In holding that the uniforms at issue may, in fact, be protected by copyright law, Justice Clarence Thomas clarified the standard for conceptual separability – the hot issue at play in the case.

While the court explicitly refused to “hold that the surface decorations are copyrightable,” stating, “We express no opinion on whether these works are sufficiently original to qualify for copyright protection,” it did set forth the highly-debated test for determining how courts should grapple with the protectability of creative elements of useful articles. Per the court’s decision, the test is as follows: A feature incorporated into 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. 

Thomas goes on to writeApplying the proper test here, the surface decorations on the cheerleading uniforms are separable and therefore eligible for copyright protection. First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities. Second, if those decorations were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under §101. Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uni- form itself.

While the court held that two-dimensional surface decorations will not always be separable, the “artwork” applied to the cheerleader uniforms at issue here did pass the test.

Dissenters Justice Breyer and Justice Kennedy “argue that the decorations are ineligible for copyright protection because, when imaginatively extracted, they form a picture of a cheerleading uniform,” according to the opinion.

To this, Thomas responded: “But this is not a bar to copyright. Just as two-dimensional fine art correlates to the shape of the canvas on which it is painted, two- dimensional applied art correlates to the contours of the article on which it is applied. The only feature of respondents’ cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms. “

Still yet, Thomas held that Varsity demonstrated that “imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.” He stated, “Failing to protect that art would create an anomaly: It would extend protection to two-dimensional designs that cover a part of a useful article but would not protect the same design if it covered the entire article. The statute does not support that distinction, nor can it be reconciled with the dissent’s recognition that ‘artwork printed on a t-shirt’ could be protected.”


The case centers on the lawsuit initially filed by Varsity Brands Inc, the dominant U.S. maker of cheerleader uniforms, accusing its smaller rival, Star Athletica, of infringing on five of its designs. The U.S. District Court for the Western District of Tennessee held that Varsity’s uniforms were not protectable, as the design elements could not be conceptually or physically separated from the uniforms. In reversing the court’s decision, the Sixth Circuit court of appeals concluded that the graphics, in fact, could be “identified separately” and were “capable of existing independently” of the uniforms, thereby subjecting them to copyright protection.

At issue before the Supreme Court was whether the stripes, zigzags and chevrons characteristic of cheerleader uniforms can be protected by copyright law, as Varsity contended, or are so fundamental to the purpose of the garment that they should not get such legal protection. Without such adornments, a cheerleader uniform might look like any other dress, Star argued.

In accordance with U.S. copyright law, design features of a useful article – such as a garment – are only subject to protection if they are “separable” from the product itself. This was – until this case – broken into two sects of “separability” – conceptual and physical – but according to the court’s decision, “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.”


Jeff Webb, Founder and Chairman of Varsity Brands, stated, “Today’s favorable ruling represents the culmination of years of hard work to protect our original design, and we are of course gratified by the outcome and what it means for our business.  But more fundamentally, we were honored to serve as advocates and fighters for the basic idea that designers everywhere can create excellent work and make investments in their future without fear of having it stolen or copied.”

Burton Brillhart, Varsity Brands’ Chief Legal Officer, added, “This was a hard-won case and the outcome would not have been possible without the extraordinary intellect, hard work and advocacy of our broader legal team.”

John Bursch, who represented Star Athletica, told WIPR that his client is “obviously disappointed with the result and believes that Justices Breyer and Kennedy had the better of the argument.” He added that today’s ruling is not the end of the litigation, as the U.S. District Court for the Western District of Tennessee must still determine whether the designs are original, and thereby, protected by copyright law.

As for whether the decision will actually serve to rid courts of the uncertainty associated with separability, that is still very much up for debate. As noted by Lee Burgunder of IPWatchDog this past fall, “Those engaged with product development eagerly await the decision in this case because there is significant judicial uncertainty about the application of copyrights to useful products. Unfortunately, this case raises rather narrow issues, and the Court will be able to resolve them while skirting the most difficult debates.” He continued on to note: “Those looking for hard-and-fast rules will ultimately feel no more satisfied than observers did after the Court’s decisions with patentable subject matter, such as in Bilski v. Kappos.”