Ornamental patterns can be protected by copyright – STAR ATHLETICA v VARSITY BRANDS

Ornamental patterns can be protected by copyright – STAR ATHLETICA v VARSITY BRANDS

A copyright is a set of exclusive rights granted to the creator of an original work of art when the art is fixed in a tangible form.  Registering the work with the United States Copyright Office will strengthen the exclusive rights granted by copyright law, but is not necessary for a copyright to be granted.  The creator of an original work of art is granted the exclusive right to copy distribute and sell the copyrighted work, among other things.  If someone other than the copyright owner exercises one of the exclusive rights granted by copyright law, that is considered copyright infringement.  A copyright owner can sue to stop copyright infringement with an injunction and to get monetary damages for infringement which has occurred.

The difference between patent and copyright law often confuses people.  Distilled to the most basic concept, patent law is intended to protect an idea and copyright is intended to protect the expression of an idea.  An invention cannot be copyrighted and a painting cannot be patented.  Law school professors frequently give their students hypothetical questions which push the limits of these concepts. An example would be an ornate vase which has been fitted with a light bulb, is it a machine which can be patented or a work of art which can be copyrighted.

The distinction between what can and cannot be copyrighted has been determined by whether the object is a useful article.  Useful articles are excluded from copyright protection by Untied States Copyright Law to the degree that ornamental features can be distinguished from functional features.  If the ornamental features of a useful article can be separated from the functional features of a useful article than the ornamental features can be copyrighted.

Over the years different circuit courts in the United States Court of Appeals have come to different conclusions on how to determine when a feature can be separately identified as an ornamental feature of a useful article.  The divergent opinions of the circuit courts meant that United States Supreme Court would need to issue an opinion to bring harmony.

The United States Supreme Court issued such an opinion in STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., No. 15–866 (U.S. 2017).  In that case the Plaintiff created cheerleader uniforms and the Defendant created copies.  The Plaintiff sued for copyright infringement.  The Defendant claimed that clothing is a useful article and therefore copyright protection is not available.

The United States Supreme Court held that 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.

The United States Supreme Court held that the surface decorations on the Plaintiff’s cheerleader 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 17 U.S.C. §101. Imaginatively removing the decorations from the uniforms and applying them in another medium also would not replicate the uniform itself.

The court went on to hold that copyright protection only applies to the surface decorations on the uniform, copyright protection does not extend to the shape, cut, or dimensions of the clothing.

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