U.S. Supreme Court Rules Copyright Protection is Available for Designs Applied to Cheerleader Uniforms

By: John Montgomery

On March 22, 2017, the Supreme Court ruled in a 6 to 2 decision that surface decorations incorporated into cheerleader uniforms could be protected by copyright.*

The opinion of the Court provides a two-part test for determining whether protectable design features are separable from a useful article to which they are applied, so that they are protectable under the Copyright Act, §101.  This test is now “the law of the land” to be applied by Federal Courts in all U.S. jurisdictions.

The opinion of the Court was delivered by Thomas, J., in which Roberts, C. J., and Alito, Sotomayor, and Kagan, JJ., joined.  Ginsburg, J., filed an opinion concurring in the judgment.  Breyer, J., filed a dissenting opinion in which Kennedy, J., joined.

Discussion of The Opinion of the Court (the “majority opinion”)

The Two-Part Test of Separability

“We hold that a feature incorporated into the design of a useful article is eligible for copyright protections 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, graphical, 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 test is deemed satisfied in this case.  The Supreme Court judgment affirms the Circuit Court finding that the design features on the cheerleading uniforms at issue could be protected by copyright.

The two-part test is based both upon statutory interpretation of the Copyright Act of 1976, consideration of legal precedent for the language of the Copyright Act, and in particular the case of Mazer v. Stein, 374 U.S. 201 (1954).  The holding of the Mazer case is deemed incorporated by Congress into the language of §101 of the Copyright Act.  Guidance for applying the two-part separability test is provided in the majority opinion with examples to the facts of the Mazer case.  Although policy considerations relating to the implications of allowing copyright protection for clothing designs had been a significant focus of the questions from the justices during the oral hearing, these policy considerations are not influential in the majority opinion.  The majority specifically declines to approach statutory construction of the Copyright Act with any presumptive hostility toward protection of industrial design for clothing. The failure of Congress to enact legislation granting special industrial design protection to clothing designs does not show Congressional intent to deny protection otherwise permitted under the Copyright Act. The Court notes that other separability tests have been asserted by the parties, by lower courts, and by the dissent.  The Court explains why these other tests are not consistent with the Court’s statutory interpretation of the language of the Copyright Act.

The Court explains how the two-part test should be applied, characterizing the first requirement as “separate identification” of the pictorial, graphical, or sculptural (PGS) feature that is incorporated into the design of the useful article.  The separate identification part of the test is not expected to be onerous. The court states  “[t]he decisionmaker need only be able to look at the useful article and spot some two or three-dimensional element that appears to have pictorial, graphic, or sculptural qualities” (citation  omitted).  The second part of the test is characterized as “independent existence” and this part is considered potentially more challenging. “The decisionmaker must determine that the identified feature has the capacity to exist apart from the utilitarian aspects of the article.” This further requires at least that (1) the identified PGS feature is not itself a useful article or an article that is normally a part of a useful article, because then it would not be capable of existing independently of that useful article; and (2) it must not be a mere replica of a useful article, because one cannot claim copyright to a useful article by obtaining a copyright in a replica of the useful article.

The specific pictorial, graphical, or sculptural (PGS) works at issue are represented by drawings from the two-dimensional copyright registrations set forth in the “Appendix to Opinion of the Court,” as follows:

Applying the two-part test to the cheerleader uniforms at issue, the court finds that “one can identify the decoration features having pictorial, graphic or sculptural qualities.” Applying the second part of the test, the court indicates that “if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniform were separated from the uniform and applied to another medium – for example a painters canvas – they would qualify as ‘two-dimensional … works of … art,’” (Copyright Act, §101) “and imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.” “The decorations are therefore separable from the uniforms and eligible for copyright protections.”  For clarification, it is stated that “[e]ven if respondents ultimately  succeed in establishing  a valid copyright in the surface decorations at issue here, respondents have no right to prohibit any person from manufacturing  a cheerleading uniform of the identical shape, cut, and dimensions to the ones on which the decorations in this case appear.”

The opinion of the Court makes it clear that the Court is only determining eligibility for copyright protection and is not deciding whether the surface decorations meet originality or any other pre-requisite for a valid copyright.

Discussion of the Concurring Opinion

The concurring opinion asserts that, in this case, a separability test did not need to be considered, because the Copyright Office legitimately granted copyright registration to two-dimensional works.  The two-dimensional works were reproduced on the cheerleader uniforms.  It is fundamental that the statute grants copyright protection to reproduction of the copyrighted work on any medium.  Here, the copyright designs were reproduced on the medium of a cheerleader uniform and should be protectable against reproduction on the medium of a cheerleader uniform or on any other medium, without determining separability of the designs from the useful article.

Discussion of the Dissenting Opinion

The dissenting opinion did not agree with the majority statement of the proper separability test.  The dissent questions the meaning the majority attributes to the statutory words “identified separately.”  The dissent asks “[j]ust when is a design separate from the “utilitarian aspects of the [useful] article?”  The dissent would propose additional inquiry into the separability.  One inquiry is with respect to physical separability of the design from the useful article such that the design features exist separately and the useful article also remains as a fully functioning utilitarian object.  If the design features are capable of physical separability, the design features would be eligible for copyright protection.  If physical separation is not possible, then a test of conceptual separability is employed to see whether one can conceive of the design features separately, without replicating a picture of the utilitarian object.  In this case, the dissent concludes that it would not be possible to separate the designs physically and conceptual separation results in the design features replicating a picture of the cheerleader uniform.  The design features on the cheerleader uniforms do not meet the dissent’s separability test and should not be copyright protectable.

The dissent also concludes that, on the facts of this case, the designs would not pass the majority test.  The PGS features identified by the majority could not be imagined to exist independently of a cheerleader uniform, because they would merely show a replica of the cheerleader uniform.  The dissent indicates that the most instructive part of the majority opinion is where it is stated that “someone could not claim a copyright in a useful article merely by creating a replica of that article in some other medium….”  The dissent would find that the two-dimensional designs of cheerleader uniforms for which copyrights were registered in this case are merely replicas of cheerleader uniforms.  It is observed that one need only look at the two-dimensional copyright drawings to see that the design features, when imagined separate from the uniform as required by the majority test, clearly depict a useful article, the cheerleader uniform.  Copyright could not be claimed in a picture for protection against reproducing a useful article depicted in the picture.

The dissent also addresses some of the policy considerations in the case and as raised at the oral hearing. Additional protection of design features of clothing is not needed to encourage innovation in the fashion industry, which is already thriving. There would be an expectation of an increased cost of clothing associated with additional copyright protection for clothing designers and manufactures.  Copyright protection for designs incorporated into useful articles could unjustifiably provide a duration of protection for nearly a century compared to patent protection for designs of useful articles for a much shorter period of time.  These considerations are of interest but, according to the majority opinion, they should not play a role in the statutory construction of the Copyright Act.


The opinion of the Court is now the law of the land and the two-part test the Court provides is the test to be applied in all circuits in the U.S., thereby “settling” the case law precedent for separability of copyright protectable PGS features from useful articles.

There are, of course, parts of the majority opinion, the concurring opinion, and the dissenting opinion for which legal analysts may ponder the meaning and applicability.  We will also wait to see whether the design features the Court identifies as “the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniform” will be found by the lower court to meet minimum requirements of originality and all other requirements for copyright protection.

Importantly, this ruling is not limited only to cheerleader uniforms and it is expected by many to have wide implications for the enormous clothing and fashion industry, and potentially for many other industries as well.  Whenever pictorial, graphical, or sculptural features may be beneficially applied to useful articles, the potential benefit of copyright protection could be important to consider. Copyright protection extends significantly longer than patent protection.  Copyright may extend protection for nearly a century, compared to fourteen years for design patents and up to twenty years for utility patents.  Damage awards for infringement of copyright can also be large, and the burden of proof on the issue of damages is generally considered to be significantly in favor of the copyright owner.  The Supreme Court’s ruling could be a game changer in many industries.  Particularly, it will be important in any consumer product industry where the design features on the surface of an otherwise useful product can play a significant role in consumer choices.  The potential for copyright protection should increasingly be considered for inclusion as an integral part of an overall IP protection strategy, even for useful articles.

*(For additional background, we reported in our November News Letter that the Supreme Court of the United States heard arguments in a closely watched case considering whether copyright protection is available for design features applied on cheerleader uniforms.  Click here to read the article.)