Star Athletica, L. L. C. v. Varsity Brands, Inc.

(Slip Opinion) OCTOBER TERM, 2016 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC.,
ET AL.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE SIXTH CIRCUIT
No. 15–866. Argued October 31, 2016—Decided March 22, 2017
The Copyright Act of 1976 makes “pictorial, graphic, or sculptural fea-
tures” of the “design of a useful article” eligible for copyright protec-
tion as artistic works if those features “can be identified separately
from, and are capable of existing independently of, the utilitarian as-
pects of the article.” 17 U. S. C. §101.
Respondents have more than 200 copyright registrations for two-
dimensional designs—consisting of various lines, chevrons, and color-
ful shapes—appearing on the surface of the cheerleading uniforms
that they design, make, and sell. They sued petitioner, who also
markets cheerleading uniforms, for copyright infringement. The Dis-
trict Court granted petitioner summary judgment, holding that the
designs could not be conceptually or physically separated from the
uniforms and were therefore ineligible for copyright protection. In
reversing, the Sixth Circuit concluded that the graphics could be
“identified separately” and were “capable of existing independently”
of the uniforms under §101.
Held: A feature incorporated into the design of a useful article is eligi-
ble for copyright protection only if the feature (1) can be perceived as
a two- or three-dimensional work of art separate from the useful arti-
cle, and (2) would qualify as a protectable pictorial, graphic, or sculp-
tural 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. That test is satisfied here. Pp. 3–17.
(a) Separability analysis is necessary in this case. Respondents
claim that two-dimensional surface decorations are always separable,
even without resorting to a §101 analysis, because they are “on a use-
ful article” rather than “designs of a useful article.” But this argu-
2 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Syllabus
ment is inconsistent with §101’s text. ”[P]ictorial” and “graphic” de-
note two-dimensional features such as pictures, paintings, or draw-
ings. Thus, by providing protection for “pictorial, graphical, and
sculptural works” incorporated into the “design of a useful article,”
§101 necessarily contemplates that such a design can include two-
dimensional features. This Court will not adjudicate in the first in-
stance the Government’s distinct argument against applying separa-
bility analysis, which was neither raised below nor advanced here by
any party. Pp. 4–6.
(b) Whether a feature incorporated into a useful article “can be
identified separately from,” and is “capable of existing independently
of,” the article’s “utilitarian aspects” is a matter of “statutory inter-
pretation.” Mazer v. Stein, 347 U. S. 201, 214. Pp. 6–10.
(1) Section 101’s separate-identification requirement is met if the
decisionmaker is able to look at the useful article and spot some two-
or three-dimensional element that appears to have pictorial, graphic,
or sculptural qualities. To satisfy the independent-existence re-
quirement, the feature must be able to exist as its own pictorial,
graphic, or sculptural work once it is imagined apart from the useful
article. If the feature could not exist as a pictorial, graphic, or sculp-
tural work on its own, it is simply one of the article’s utilitarian as-
pects. And to qualify as a pictorial, graphic, or sculptural work on its
own, the feature cannot be a useful article or “[a]n article that is
normally a part of a useful article,” §101. Neither could one claim a
copyright in a useful article by creating a replica of it in another me-
dium. Pp. 7–8.
(2) The statute as a whole confirms this interpretation. Section
101, which protects art first fixed in the medium of a useful article, is
essentially the mirror image of §113(a), which protects art first fixed
in a medium other than a useful article and subsequently applied to a
useful article. Together, these provisions make clear that copyright
protection extends to pictorial, graphic, and sculptural works regard-
less of whether they were created as freestanding art or as features of
useful articles. P. 8.
(3) This interpretation is also consistent with the Copyright Act’s
history. In Mazer, a case decided under the 1909 Copyright Act, the
Court held that respondents owned a copyright in a statuette created
for use as a lamp base. In so holding, the Court approved a Copy-
right Office regulation extending protection to works of art that
might also serve a useful purpose and held that it was irrelevant to
the copyright inquiry whether the statuette was initially created as a
freestanding sculpture or as a lamp base. Soon after, the Copyright
Office enacted a regulation implementing Mazer’s holding that antic-
ipated the language of §101, thereby introducing the modern separa-
Cite as: 580 U. S. ____ (2017) 3
Syllabus
bility test to copyright law. Congress essentially lifted the language
from those post-Mazer regulations and placed it in §101 of the 1976
Act. Pp. 8–10.
(c) Applying the proper test here, the surface decorations on the
cheerleading uniforms are separable and therefore eligible for copy-
right 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.
The dissent argues that the decorations are ineligible for copyright
protection because, when imaginatively extracted, they form a pic-
ture of a cheerleading uniform. Petitioner similarly claims that the
decorations cannot be copyrighted because, even when extracted from
the useful article, they retain the outline of a cheerleading uniform.
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. Respondents may prohibit the reproduc-
tion only of the surface designs on a uniform or in any other medium
of expression. Respondents have no right to prevent anyone from
manufacturing a cheerleading uniform that is identical in shape, cut,
or dimensions to the uniforms at issue here. Pp. 10–12.
(d) None of the objections raised by petitioner or the Government is
meritorious. Pp. 12–17.
(1) Petitioner and the Government focus on the relative utility
of the plain white uniform that would remain if the designs were
physically removed from the uniform. But the separability inquiry
focuses on the extracted feature and not on any aspects of the useful
article remaining after the imaginary extraction. The statute does
not require the imagined remainder to be a fully functioning useful
article at all. Nor can an artistic feature that would be eligible for
copyright protection on its own lose that protection simply because it
was first created as a feature of the design of a useful article, even if
it makes that article more useful. This has been the rule since Ma-
zer, and it is consistent with the statute’s explicit protection of “ap-
plied art.” In rejecting petitioner’s view, the Court necessarily aban-
dons the distinction between “physical” and “conceptual” separability
adopted by some courts and commentators. Pp. 12–15.
(2) Petitioner also suggests incorporating two “objective” com-
4 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Syllabus
ponents into the test—one requiring consideration of evidence of the
creator’s design methods, purposes, and reasons, and one looking to
the feature’s marketability. The Court declines to incorporate these
components because neither is grounded in the statute’s text.
Pp. 15–16.
(3) Finally, petitioner claims that protecting surface decora-
tions is inconsistent with Congress’ intent to entirely exclude indus-
trial design from copyright. But Congress has given limited copy-
right protection to certain features of industrial design. Approaching
the statute with presumptive hostility toward protection for industri-
al design would undermine that choice. In any event, the test adopt-
ed here does not render the underlying uniform eligible for copyright
protection. Pp. 16–17.
799 F. 3d 468, affirmed.
THOMAS, J., delivered the opinion of the Court, 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.
Cite as: 580 U. S. ____ (2017) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash-
ington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–866
_________________
STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY
BRANDS, INC., ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SIXTH CIRCUIT
[March 22, 2017]
JUSTICE THOMAS delivered the opinion of the Court.
Congress has provided copyright protection for original
works of art, but not for industrial designs. The line
between art and industrial design, however, is often diffi-
cult to draw. This is particularly true when an industrial
design incorporates artistic elements. Congress has af-
forded limited protection for these artistic elements by
providing that “pictorial, graphic, or sculptural features”
of the “design of a useful article” are eligible for copyright
protection as artistic works if those features “can be iden-
tified separately from, and are capable of existing inde-
pendently of, the utilitarian aspects of the article.” 17
U. S. C. §101.
We granted certiorari to resolve widespread disagree-
ment over the proper test for implementing §101’s separate-
identification and independent-existence requirements.
578 U. S. ___ (2016). We hold that a feature incor-
porated into the design of a useful article is eligible for
copyright protection only if the feature (1) can be per-
ceived as a two- or three-dimensional work of art separate
from the useful article and (2) would qualify as a protecta-
2 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
ble pictorial, graphic, or sculptural work—either on its
own or fixed in some other tangible medium of expres-
sion—if it were imagined separately from the useful arti-
cle into which it is incorporated. Because that test is
satisfied in this case, we affirm.
I
Respondents Varsity Brands, Inc., Varsity Spirit Corpo-
ration, and Varsity Spirit Fashions & Supplies, Inc., de-
sign, make, and sell cheerleading uniforms. Respondents
have obtained or acquired more than 200 U. S. copyright
registrations for two-dimensional designs appearing on
the surface of their uniforms and other garments. These
designs are primarily “combinations, positionings, and
arrangements of elements” that include “chevrons . . . ,
lines, curves, stripes, angles, diagonals, inverted [chev-
rons], coloring, and shapes.” App. 237. At issue in this
case are Designs 299A, 299B, 074, 078, and 0815. See
Appendix, infra.
Petitioner Star Athletica, L. L. C., also markets and
sells cheerleading uniforms. Respondents sued petitioner
for infringing their copyrights in the five designs. The
District Court entered summary judgment for petitioner
on respondents’ copyright claims on the ground that the
designs did not qualify as protectable pictorial, graphic, or
sculptural works. It reasoned that the designs served the
useful, or “utilitarian,” function of identifying the gar-
ments as “cheerleading uniforms” and therefore could not
be “physically or conceptually” separated under §101 “from
the utilitarian function” of the uniform. 2014 WL 819422,
*8–*9 (WD Tenn., Mar. 1, 2014).
The Court of Appeals for the Sixth Circuit reversed. 799
F. 3d 468, 471 (2015). In its view, the “graphic designs”
were “separately identifiable” because the designs “and a
blank cheerleading uniform can appear ‘side by side’—one
as a graphic design, and one as a cheerleading uniform.”
Cite as: 580 U. S. ____ (2017) 3
Opinion of the Court
Id., at 491 (quoting Compendium of U. S. Copyright Office
Practices §924.2(B) (3d ed. 2014) (Compendium)). And it
determined that the designs were “ ‘capable of existing
independently’ ” because they could be incorporated onto
the surface of different types of garments, or hung on the
wall and framed as art. 799 F. 3d, at 491, 492.
Judge McKeague dissented. He would have held that,
because “identifying the wearer as a cheerleader” is a
utilitarian function of a cheerleading uniform and the
surface designs were “integral to” achieving that function,
the designs were inseparable from the uniforms. Id., at
495–496.
II
The first element of a copyright-infringement claim is
“ownership of a valid copyright.” Feist Publications, Inc. v.
Rural Telephone Service Co., 499 U. S. 340, 361 (1991). A
valid copyright extends only to copyrightable subject
matter. See 4 M. Nimmer & D. Nimmer, Copyright
§13.01[A] (2010) (Nimmer). The Copyright Act of 1976
defines copyrightable subject matter as “original works of
authorship fixed in any tangible medium of expression.”
17 U. S. C. §102(a).
“Works of authorship” include “pictorial, graphic, and
sculptural works,” §102(a)(5), which the statute defines to
include “two-dimensional and three-dimensional works of
fine, graphic, and applied art, photographs, prints and art
reproductions, maps, globes, charts, diagrams, models,
and technical drawings, including architectural plans,”
§101. And a work of authorship is “ ‘fixed’ in a tangible
medium of expression when it[ is] embodi[ed] in a” “mate-
rial objec[t] . . . from which the work can be perceived,
reproduced, or otherwise communicated.” Ibid. (defini-
tions of “fixed” and “copies”).
The Copyright Act also establishes a special rule for
copyrighting a pictorial, graphic, or sculptural work incor-
4 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
porated into a “useful article,” which is defined as “an
article having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to con-
vey information.” Ibid. The statute does not protect
useful articles as such. Rather, “the design of a useful
article” is “considered a pictorial, graphical, or sculptural
work only if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural features that
can be identified separately from, and are capable of exist-
ing independently of, the utilitarian aspects of the article.”
Ibid.
Courts, the Copyright Office, and commentators have
described the analysis undertaken to determine whether a
feature can be separately identified from, and exist inde-
pendently of, a useful article as “separability.” In this
case, our task is to determine whether the arrangements
of lines, chevrons, and colorful shapes appearing on the
surface of respondents’ cheerleading uniforms are eligible
for copyright protection as separable features of the design
of those cheerleading uniforms.
A
As an initial matter, we must address whether separa-
bility analysis is necessary in this case.
1
Respondents argue that “[s]eparability is only implicated
when a [pictorial, graphic, or sculptural] work is the ‘de-
sign of a useful article.’ ” Brief for Respondents 25. They
contend that the surface decorations in this case are “two-
dimensional graphic designs that appear on useful arti-
cles,” but are not themselves designs of useful articles.
Id., at 52. Consequently, the surface decorations are
protected two-dimensional works of graphic art without
regard to any separability analysis under §101. Ibid.; see
2 W. Patry, Copyright §3:151, p. 3–485 (2016) (Patry)
Cite as: 580 U. S. ____ (2017) 5
Opinion of the Court
(“Courts looking at two-dimensional design claims should
not apply the separability analysis regardless of the three-
dimensional form that design is embodied in”). Under this
theory, two-dimensional artistic features on the surface of
useful articles are “inherently separable.” Brief for Re-
spondents 26.
This argument is inconsistent with the text of §101. The
statute requires separability analysis for any “pictorial,
graphic, or sculptural features” incorporated into the
“design of a useful article.” “Design” refers here to “the
combination” of “details” or “features” that “go to make up”
the useful article. 3 Oxford English Dictionary 244 (def. 7,
first listing) (1933) (OED). Furthermore, the words “picto-
rial” and “graphic” include, in this context, two-
dimensional features such as pictures, paintings, or draw-
ings. See 4 id., at 359 (defining “[g]raphic” to mean “[o]f or
pertaining to drawing or painting”); 7 id., at 830 (defining
“[p]ictorial” to mean “of or pertaining to painting or draw-
ing”). And the statute expressly defines “[p]ictorial,
graphical, and sculptural works” to include “two-
dimensional . . . works of . . . art.” §101. The statute thus
provides that the “design of a useful article” can include
two-dimensional “pictorial” and “graphic” features, and
separability analysis applies to those features just as it
does to three-dimensional “sculptural” features.
2
The United States makes a related but distinct argu-
ment against applying separability analysis in this case,
which respondents do not and have not advanced. As part
of their copyright registrations for the designs in this case,
respondents deposited with the Copyright Office drawings
and photographs depicting the designs incorporated onto
cheerleading uniforms. App. 213–219; Appendix, infra.
The Government argues that, assuming the other statutory
requirements were met, respondents obtained a copyright
6 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
in the deposited drawings and photographs and have
simply reproduced those copyrighted works on the surface
of a useful article, as they would have the exclusive right
to do under the Copyright Act. See Brief for United States
as Amicus Curiae 14–15, 17–22. Accordingly, the Gov-
ernment urges, separability analysis is unnecessary on the
record in this case. We generally do not entertain argu-
ments that were not raised below and that are not ad-
vanced in this Court by any party, Burwell v. Hobby Lobby
Stores, Inc., 573 U. S. ___, ___ (2014), because “[i]t is not
the Court’s usual practice to adjudicate either legal or
predicate factual questions in the first instance,” CRST
Van Expedited, Inc. v. EEOC, 578 U. S. ___, ___ (2016)
(slip op., at 16). We decline to depart from our usual
practice here.
B
We must now decide when a feature incorporated into a
useful article “can be identified separately from” and is
“capable of existing independently of ” “the utilitarian
aspects” of the article. This is not a free-ranging search
for the best copyright policy, but rather “depends solely on
statutory interpretation.” Mazer v. Stein, 347 U. S. 201,
214 (1954). “The controlling principle in this case is the
basic and unexceptional rule that courts must give effect
to the clear meaning of statutes as written.” Estate of
Cowart v. Nicklos Drilling Co., 505 U. S. 469, 476 (1992).
We thus begin and end our inquiry with the text, giving
each word its “ordinary, contemporary, common meaning.”
Walters v. Metropolitan Ed. Enterprises, Inc., 519 U. S.
202, 207 (1997) (internal quotation marks omitted). We do
not, however, limit this inquiry to the text of §101 in
isolation. “[I]nterpretation of a phrase of uncertain reach
is not confined to a single sentence when the text of the
whole statute gives instruction as to its meaning.” Mara­
cich v. Spears, 570 U. S. ___, ___ (2013) (slip op., at 15).
Cite as: 580 U. S. ____ (2017) 7
Opinion of the Court
We thus “look to the provisions of the whole law” to de-
termine §101’s meaning. United States v. Heirs of Bois­
doré, 8 How. 113, 122 (1849).
1
The statute provides that a “pictorial, graphic, or sculp-
tural featur[e]” incorporated into the “design of a useful
article” is eligible for copyright protection if it (1) “can be
identified separately from,” and (2) is “capable of existing
independently of, the utilitarian aspects of the article.”
§101. The first requirement—separate identification—is
not onerous. The 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. See 2 Patry §3:146, at 3–474 to
3–475.
The independent-existence requirement is ordinarily
more difficult to satisfy. The decisionmaker must deter-
mine that the separately identified feature has the capacity
to exist apart from the utilitarian aspects of the article.
See 2 OED 88 (def. 5) (defining “[c]apable” of as “[h]aving
the needful capacity, power, or fitness for”). In other
words, the feature must be able to exist as its own pictorial,
graphic, or sculptural work as defined in §101 once it is
imagined apart from the useful article. If the feature is
not capable of existing as a pictorial, graphic, or sculptural
work once separated from the useful article, then it was
not a pictorial, graphic, or sculptural feature of that arti-
cle, but rather one of its utilitarian aspects.
Of course, to qualify as a pictorial, graphic, or sculptural
work on its own, the feature cannot itself be a useful
article or “[a]n article that is normally a part of a useful
article” (which is itself considered a useful article). §101.
Nor could someone claim a copyright in a useful article
merely by creating a replica of that article in some other
medium—for example, a cardboard model of a car. Al-
8 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
though the replica could itself be copyrightable, it would
not give rise to any rights in the useful article that in-
spired it.
2
The statute as a whole confirms our interpretation. The
Copyright Act provides “the owner of [a] copyright” with
the “exclusive righ[t] . . . to reproduce the copyrighted
work in copies.” §106(1). The statute clarifies that this
right “includes the right to reproduce the [copyrighted]
work in or on any kind of article, whether useful or other-
wise.” §113(a). Section 101 is, in essence, the mirror
image of §113(a). Whereas §113(a) protects a work of
authorship first fixed in some tangible medium other than
a useful article and subsequently applied to a useful arti-
cle, §101 protects art first fixed in the medium of a useful
article. The two provisions make clear that copyright
protection extends to pictorial, graphic, and sculptural
works regardless of whether they were created as free-
standing art or as features of useful articles. The ultimate
separability question, then, is whether the feature for
which copyright protection is claimed would have been
eligible for copyright protection as a pictorial, graphic, or
sculptural work had it originally been fixed in some tangi-
ble medium other than a useful article before being ap-
plied to a useful article.
3
This interpretation is also consistent with the history of
the Copyright Act. In Mazer, a case decided under the
1909 Copyright Act, the respondents copyrighted a statu-
ette depicting a dancer. The statuette was intended for
use as a lamp base, “with electric wiring, sockets and lamp
shades attached.” 347 U. S., at 202. Copies of the statu-
ette were sold both as lamp bases and separately as statu-
ettes. Id., at 203. The petitioners copied the statuette and
Cite as: 580 U. S. ____ (2017) 9
Opinion of the Court
sold lamps with the statuette as the base. They defended
against the respondents’ infringement suit by arguing that
the respondents did not have a copyright in a statuette
intended for use as a lamp base. Id., at 204–205.
Two of Mazer’s holdings are relevant here. First, the
Court held that the respondents owned a copyright in the
statuette even though it was intended for use as a lamp
base. See id., at 214. In doing so, the Court approved the
Copyright Office’s regulation extending copyright protec-
tion to works of art that might also serve a useful purpose.
See ibid. (approving 37 CFR §202.8(a) (1949) (protect-
ing “works of artistic craftsmanship, in so far as their
form but not their mechanical or utilitarian aspects are
concerned”)).
Second, the Court held that it was irrelevant to the
copyright inquiry whether the statuette was initially
created as a freestanding sculpture or as a lamp base. 347
U. S., at 218–219 (“Nor do we think the subsequent regis-
tration of a work of art published as an element in a man-
ufactured article, is a misuse of copyright. This is not
different from the registration of a statuette and its later
embodiment in an industrial article”). Mazer thus inter-
preted the 1909 Act consistently with the rule discussed
above: If a design would have been copyrightable as a
standalone pictorial, graphic, or sculptural work, it is
copyrightable if created first as part of a useful article.
Shortly thereafter, the Copyright Office enacted a regu-
lation implementing the holdings of Mazer. See 1 Nimmer
§2A.08[B][1][b] (2016). As amended, the regulation intro-
duced the modern separability test to copyright law:
“If the sole intrinsic function of an article is its utility,
the fact that the article is unique and attractively
shaped will not qualify it as a work of art. However, if
the shape of a utilitarian article incorporates features,
such as artistic sculpture, carving, or pictorial repre-
10 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
sentation, which can be identified separately and are
capable of existing independently as a work of art,
such features will be eligible for registration.” 37 CFR
§202.10(c) (1960) (punctuation altered).
Congress essentially lifted the language governing
protection for the design of a useful article directly from
the post-Mazer regulations and placed it into §101 of the
1976 Act. Consistent with Mazer, the approach we outline
today interprets §§101 and 113 in a way that would afford
copyright protection to the statuette in Mazer regardless
of whether it was first created as a standalone sculptural
work or as the base of the lamp. See 347 U. S., at218–219.
C
In sum, a feature of the design of a useful article is
eligible for copyright if, when identified and imagined
apart from the useful article, it would qualify as a pictorial,
graphic, or sculptural work either on its own or when fixed
in some other tangible medium.
Applying this test to the surface decorations on the
cheerleading uniforms is straightforward. First, one can
identify the decorations as features having pictorial,
graphic, or sculptural qualities. Second, if the arrange-
ment of colors, shapes, stripes, and chevrons on the sur-
face of the cheerleading uniforms were separated from the
uniform and applied in another medium—for example, on a
painter’s canvas—they would qualify as “two-dimensional
. . . works of . . . art,” §101. And imaginatively removing
the surface decorations from the uniforms and applying
them in another medium would not replicate the uniform
itself. Indeed, respondents have applied the designs in
this case to other media of expression—different types of
clothing—without replicating the uniform. See App. 273–
279. The decorations are therefore separable from the
Cite as: 580 U. S. ____ (2017) 11
Opinion of the Court
uniforms and eligible for copyright protection.1
The dissent argues that the designs are not separable
because imaginatively removing them from the uniforms
and placing them in some other medium of expression—a
canvas, for example—would create “pictures of cheerleader
uniforms.” Post, at 10 (opinion of BREYER, J.). Petitioner
similarly argues that the decorations cannot be copyrighted
because, even when extracted from the useful article,
they retain the outline of a cheerleading uniform. Brief
for Petitioner 48–49.
This is not a bar to copyright. Just as two-dimensional
fine art corresponds 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. A fresco
painted on a wall, ceiling panel, or dome would not lose
copyright protection, for example, simply because it was
designed to track the dimensions of the surface on which it
was painted. Or consider, for example, a design etched or
painted on the surface of a guitar. If that entire design is
imaginatively removed from the guitar’s surface and
placed on an album cover, it would still resemble the
shape of a guitar. But the image on the cover does not
“replicate” the guitar as a useful article. Rather, the
design is a two-dimensional work of art that corresponds
to the shape of the useful article to which it was applied.
The statute protects that work of art whether it is first
drawn on the album cover and then applied to the guitar’s
surface, or vice versa. 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
——————
1 We do not today hold that the surface decorations are copyrightable.
We express no opinion on whether these works are sufficiently original
to qualify for copyright protection, see Feist Publications, Inc. v. Rural
Telephone Service Co., 499 U. S. 340, 358–359 (1991), or on whether
any other prerequisite of a valid copyright has been satisfied.
12 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
entire article. The statute does not support that distinc-
tion, nor can it be reconciled with the dissent’s recognition
that “artwork printed on a t-shirt” could be protected.
Post, at 4 (internal quotation marks omitted).
To be clear, the only feature of the cheerleading uniform
eligible for a copyright in this case is the two-dimensional
work of art fixed in the tangible medium of the uniform
fabric. Even if respondents ultimately succeed in estab-
lishing a valid copyright in the surface decorations at
issue here, respondents have no right to prohibit any
person from manufacturing a cheerleading uniform of
identical shape, cut, and dimensions to the ones on which
the decorations in this case appear. They may prohibit
only the reproduction of the surface designs in any tangi-
ble medium of expression—a uniform or otherwise.2
D
Petitioner and the Government raise several objections
to the approach we announce today. None is meritorious.
1
Petitioner first argues that our reading of the statute is
missing an important step. It contends that a feature may
exist independently only if it can stand alone as a copy-
rightable work and if the useful article from which it was
extracted would remain equally useful. In other words,
——————
2 The dissent suggests that our test would lead to the copyrighting of
shovels. Post, at 7; Appendix to opinion of BREYER, J., fig. 4, post. But a
shovel, like a cheerleading uniform, even if displayed in an art gallery,
is “an article having an intrinsic utilitarian function that is not merely
to portray the appearance of the article or to convey information.” 17
U. S. C. §101. It therefore cannot be copyrighted. A drawing of a
shovel could, of course, be copyrighted. And, if the shovel included any
artistic features that could be perceived as art apart from the shovel,
and which would qualify as protectable pictorial, graphic, or sculptural
works on their own or in another medium, they too could be copyrighted.
But a shovel as a shovel cannot.
Cite as: 580 U. S. ____ (2017) 13
Opinion of the Court
copyright extends only to “solely artistic” features of useful
articles. Brief for Petitioner 33. According to petitioner, if
a feature of a useful article “advance[s] the utility of the
article,” id., at 38, then it is categorically beyond the scope
of copyright, id., at 33. The designs here are not protected,
it argues, because they are necessary to two of the uni-
forms’ “inherent, essential, or natural functions”—
identifying the wearer as a cheerleader and enhancing the
wearer’s physical appearance. Id., at 38, 48; Reply Brief 2,
16. Because the uniforms would not be equally useful
without the designs, petitioner contends that the designs
are inseparable from the “utilitarian aspects” of the uni-
form. Brief for Petitioner 50.
The Government raises a similar argument, although it
reaches a different result. It suggests that the appropriate
test is whether the useful article with the artistic feature
removed would “remai[n] similarly useful.” Brief for
United States as Amicus Curiae 29 (emphasis added). In
the view of the United States, however, a plain white
cheerleading uniform is “similarly useful” to uniforms
with respondents’ designs. Id., at 27–28.
The debate over the relative utility of a plain white
cheerleading uniform is unnecessary. The focus of the
separability inquiry is on the extracted feature and not on
any aspects of the useful article that remain after the
imaginary extraction. The statute does not require the
decisionmaker to imagine a fully functioning useful article
without the artistic feature. Instead, it requires that the
separated feature qualify as a nonuseful pictorial, graphic,
or sculptural work on its own.
Of course, because the removed feature may not be a
useful article—as it would then not qualify as a pictorial,
graphic, or sculptural work—there necessarily would be
some aspects of the original useful article “left behind” if
the feature were conceptually removed. But the statute
does not require the imagined remainder to be a fully
14 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
functioning useful article at all, much less an equally
useful one. Indeed, such a requirement would deprive the
Mazer statuette of protection had it been created first as a
lamp base rather than as a statuette. Without the base,
the “lamp” would be just a shade, bulb, and wires. The
statute does not require that we imagine a nonartistic
replacement for the removed feature to determine whether
that feature is capable of an independent existence.
Petitioner’s argument follows from its flawed view that
the statute protects only “solely artistic” features that
have no effect whatsoever on a useful article’s utilitarian
function. This view is inconsistent with the statutory text.
The statute expressly protects two- and three-dimensional
“applied art.” §101. “Applied art” is art “employed in the
decoration, design, or execution of useful objects,” Web-
ster’s Third New International Dictionary 105 (1976)
(emphasis added), or “those arts or crafts that have a
primarily utilitarian function, or . . . the designs and
decorations used in these arts,” Random House Dictionary
73 (1966) (emphasis added); see also 1 OED 576 (2d ed.
1989) (defining “applied” as “[p]ut to practical use”). An
artistic feature that would be eligible for copyright protec-
tion on its own cannot lose that protection simply because
it was first created as a feature of the design of a useful
article, even if it makes that article more useful.
Indeed, this has been the rule since Mazer. In holding
that the statuette was protected, the Court emphasized
that the 1909 Act abandoned any “distinctions between
purely aesthetic articles and useful works of art.” 347
U. S., at 211. Congress did not enact such a distinction in
the 1976 Act. Were we to accept petitioner’s argument
that the only protectable features are those that play
absolutely no role in an article’s function, we would effec-
tively abrogate the rule of Mazer and read “applied art”
out of the statute.
Because we reject the view that a useful article must
Cite as: 580 U. S. ____ (2017) 15
Opinion of the Court
remain after the artistic feature has been imaginatively
separated from the article, we necessarily abandon the
distinction between “physical” and “conceptual” separabil-
ity, which some courts and commentators have adopted
based on the Copyright Act’s legislative history. See H. R.
Rep. No. 94–1476, p. 55 (1976). According to this view, a
feature is physically separable from the underlying useful
article if it can “be physically separated from the article by
ordinary means while leaving the utilitarian aspects of the
article completely intact.” Compendium §924.2(A); see
also Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F. 3d
324, 329 (CA2 2005). Conceptual separability applies if
the feature physically could not be removed from the
useful article by ordinary means. See Compendium
§924.2(B); but see 1 P. Goldstein, Copyright §2.5.3, p. 2:77
(3d ed. 2016) (explaining that the lower courts have been
unable to agree on a single conceptual separability test); 2
Patry §§3:140–3:144.40 (surveying the various approaches
in the lower courts).
The statutory text indicates that separability is a con-
ceptual undertaking. Because separability does not re-
quire the underlying useful article to remain, the physical-
conceptual distinction is unnecessary.
2
Petitioner next argues that we should incorporate two
“objective” components, Reply Brief 9, into our test to
provide guidance to the lower courts: (1) “whether the
design elements can be identified as reflecting the designer’s
artistic judgment exercised independently of functional
influence,” Brief for Petitioner 34 (emphasis deleted and
internal quotation marks omitted), and (2) whether “there
is [a] substantial likelihood that the pictorial, graphic, or
sculptural feature would still be marketable to some sig-
nificant segment of the community without its utilitarian
function,” id., at 35 (emphasis deleted and internal quota-
16 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
Opinion of the Court
tion marks omitted).
We reject this argument because neither consideration
is grounded in the text of the statute. The first would
require the decisionmaker to consider evidence of the
creator’s design methods, purposes, and reasons. Id., at
48. The statute’s text makes clear, however, that our
inquiry is limited to how the article and feature are per-
ceived, not how or why they were designed. See Brandir
Int’l, Inc. v. Cascade Pacific Lumber Co., 834 F. 2d 1142,
1152 (CA2 1987) (Winter, J., concurring in part and dis-
senting in part) (The statute “expressly states that the
legal test is how the final article is perceived, not how it
was developed through various stages”).
The same is true of marketability. Nothing in the stat-
ute suggests that copyrightability depends on market
surveys. Moreover, asking whether some segment of the
market would be interested in a given work threatens to
prize popular art over other forms, or to substitute judicial
aesthetic preferences for the policy choices embodied in
the Copyright Act. See Bleistein v. Donaldson Litho­
graphing Co., 188 U. S. 239, 251 (1903) (“It would be a
dangerous undertaking for persons trained only to the law
to constitute themselves final judges of the worth of picto-
rial illustrations, outside of the narrowest and most obvi-
ous limits”).
3
Finally, petitioner argues that allowing the surface
decorations to qualify as a “work of authorship” is incon-
sistent with Congress’ intent to entirely exclude industrial
design from copyright. Petitioner notes that Congress
refused to pass a provision that would have provided
limited copyright protection for industrial designs, includ-
ing clothing, when it enacted the 1976 Act, see id., at 9–11
(citing S. 22, Tit. II, 94th Cong., 2d Sess., 122 Cong. Rec.
3856–3859 (1976)), and that it has enacted laws protecting
Cite as: 580 U. S. ____ (2017) 17
Opinion of the Court
designs for specific useful articles—semiconductor chips
and boat hulls, see 17 U. S. C. §§901–914, 1301–1332—
while declining to enact other industrial design statutes,
Brief for Petitioner 29, 43. From this history of failed
legislation petitioner reasons that Congress intends to
channel intellectual property claims for industrial design
into design patents. It therefore urges us to approach this
question with a presumption against copyrightability. Id.,
at 27.
We do not share petitioner’s concern. As an initial
matter, “[c]ongressional inaction lacks persuasive signifi-
cance” in most circumstances. Pension Benefit Guaranty
Corporation v. LTV Corp., 496 U. S. 633, 650 (1990) (in-
ternal quotation marks omitted). Moreover, we have long
held that design patent and copyright are not mutually
exclusive. See Mazer, 347 U. S., at 217. Congress has
provided for limited copyright protection for certain fea-
tures of industrial design, and approaching the statute
with presumptive hostility toward protection for industrial
design would undermine Congress’ choice. In any event,
as explained above, our test does not render the shape,
cut, and physical dimensions of the cheerleading uniforms
eligible for copyright protection.
III
We hold that an artistic feature of the design of a useful
article is eligible for copyright protection 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 in some other medium if imagined
separately from the useful article. Because the designs on
the surface of respondents’ cheerleading uniforms in this
case satisfy these requirements, the judgment of the Court
of Appeals is affirmed.
It is so ordered.
APPENDIX TO OPINION OF THE COURT
Design 299A Design 299B Design 074 Design 078 Design 0815
Cite as: 580 U. S. ____ (2017) 1
GINSBURG
GINSBURG , J., concurring
, J., concurring in judgment
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–866
_________________
STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY
BRANDS, INC., ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SIXTH CIRCUIT
[March 22, 2017]
JUSTICE GINSBURG, concurring in the judgment.
I concur in the Court’s judgment but not in its opinion.
Unlike the majority, I would not take up in this case the
separability test appropriate under 17 U. S. C. §101. 1
Consideration of that test is unwarranted because the
designs at issue are not designs of useful articles. Instead,
the designs are themselves copyrightable pictorial or
graphic works reproduced on useful articles. 2
——————
1 Courts “have struggled mightily to formulate a test” for the separa-
bility analysis. 799 F. 3d 468, 484 (CA6 2015); see 2 W. Patry, Copy-
right §3:136, p. 3–420 (2016) (noting “widespread interpretative disar-
ray” over the separability test); Ginsburg, “Courts Have Twisted
Themselves into Knots”: U. S. Copyright Protection for Applied Art, 40
Colum. J. L. & Arts 1, 2 (2016) (“The ‘separability’ test . . . has resisted
coherent application . . . .”); 1 M. Nimmer & D. Nimmer, Copyright
§2A.08[B][6], p. 2A–84 (2016) (separability is a “perennially tangled
aspect of copyright doctrine”).
2 Like the Court, I express no opinion on whether the designs other-
wise meet the requirements for copyrightable subject matter. See ante,
at 11, n. 1; 17 U. S. C. §102(a) (“Copyright protection subsists, in
accordance with this title, in original works of authorship fixed in any
tangible medium of expression, now known or later developed, from
which they can be perceived, reproduced, or otherwise communicated.”).
In view of the dissent’s assertion that Varsity’s designs are “plainly
unoriginal,” post, at 11, however, I note this Court’s recognition that
“the requisite level of creativity [for copyrightability] is extremely low;
even a slight amount will suffice,” Feist Publications, Inc. v. Rural
2 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
GINSBURG , J., concurring
, J., concurring in judgment
A pictorial, graphic, or sculptural work (PGS work) is
copyrightable. §102(a)(5). PGS works include “two-
dimensional and three-dimensional works of fine, graphic,
and applied art.” §101. Key to this case, a copyright in a
standalone PGS work “includes the right to reproduce the
work in or on any kind of article, whether useful or other-
wise.” §113(a). Because the owner of a copyright in a pre-
existing PGS work may exclude a would-be infringer from
reproducing that work on a useful article, there is no need
to engage in any separability inquiry to resolve the instant
petition.
The designs here in controversy are standalone pictorial
and graphic works that respondents Varsity Brands, Inc.,
et al. (Varsity) reproduce on cheerleading uniforms. Var-
sity’s designs first appeared as pictorial and graphic works
that Varsity’s design team sketched on paper. App. 281.
Varsity then sought copyright protection for those two-
dimensional designs, not for cheerleading costumes; its
registration statements claimed “2-Dimensional artwork”
and “fabric design (artwork).” Appendix, infra, at 4–7, 9–
10, 12–14. Varsity next reproduced its two-dimensional
graphic designs on cheerleading uniforms, also on other
garments, including T-shirts and jackets. See, e.g., App.
274, 276. 3
——————
Telephone Service Co., 499 U. S. 340, 345 (1991); see Atari Games Corp.
v. Oman, 979 F. 2d 242 (CADC 1992).
3 That Varsity’s designs can be placed on jackets or T-shirts without
replicating a cheerleader’s uniform supports their qualification as
fabric designs. The dissent acknowledges that fabric designs are
copyrightable, but maintains that Varsity’s designs do not count
because Varsity’s submissions depict clothing, not fabric designs. Post,
at 10–11. But registrants claiming copyrightable designs may submit
drawings or photos of those designs as they appear on useful articles.
See Compendium of U. S. Copyright Office Practices §1506 (3d ed.
2014) (“To register a copyrightable design that has been applied to the
back of a useful article, such as a chair, the applicant may submit
drawings of the design as it appears on the chair[.]”), online at
Cite as: 580 U. S. ____ (2017) 3
GINSBURG
GINSBURG , J., concurring
, J., concurring in judgment
In short, Varsity’s designs are not themselves useful
articles meet for separability determination under §101;
they are standalone PGS works that may gain copyright
protection as such, including the exclusive right to repro-
duce the designs on useful articles. 4
——————
https://www.copyright.gov/comp3/docs/compendium.pdf (as last visited
Mar. 8, 2017). And, as noted in text, Varsity’s registration statements
claimed “2-Dimensional artwork” and “fabric design (artwork).” Ap-
pendix, infra, at 4–7, 9–10, 12–14.
The dissent also acknowledges that artwork printed on a T-shirt is
copyrightable. Post, at 4. Varsity’s colored shapes and patterns can be,
and indeed are, printed on T-shirts. See, e.g., App. 274. Assuming
Varsity’s designs meet the other requirements for copyrightable subject
matter, they would fit comfortably within the Copyright Office guidance
featured by the dissent. See post, at 4 (citing Compendium of U. S.
Copyright Office Practices, supra, §924.2(B).
4 The majority declines to address this route to decision because, it
says, Varsity has not advanced it. Ante, at 5–6. I read Varsity’s brief
differently. See Brief for Respondents 25 (explaining that the Copy-
right Act “expressly provides that PGS designs do not lose their protec-
tion when they appear ‘in or on’ a useful article,” quoting §113(a)); id.,
at 52 (disclaiming the need for separability analysis because the de-
signs are themselves PGS works).
4 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
APPENDIX
Cite as: 580 U. S. ____ (2017) 5
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
6 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
Cite as: 580 U. S. ____ (2017) 7
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
8 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
Cite as: 580 U. S. ____ (2017) 9
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
10 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
Cite as: 580 U. S. ____ (2017) 11
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
12 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
Cite as: 580 U. S. ____ (2017) 13
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
14 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
GINSBURG
Appendix , J., concurring
to opinion of GINSBURG, J.
Cite as: 580 U. S. ____ (2017) 1
BREYER, J., dissenting
SUPREME COURT OF THE UNITED STATES
_________________
No. 15–866
_________________
STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY
BRANDS, INC., ET AL.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SIXTH CIRCUIT
[March 22, 2017]
JUSTICE BREYER, with whom JUSTICE KENNEDY joins,
dissenting.
I agree with much in the Court’s opinion. But I do not
agree that the designs that Varsity Brands, Inc., submit-
ted to the Copyright Office are eligible for copyright pro-
tection. Even applying the majority’s test, the designs
cannot “be perceived as . . . two- or three-dimensional
work[s] of art separate from the useful article.” Ante, at 1.
Look at the designs that Varsity submitted to the Copy-
right Office. See Appendix to opinion of the Court, ante.
You will see only pictures of cheerleader uniforms. And
cheerleader uniforms are useful articles. A picture of the
relevant design features, whether separately “perceived”
on paper or in the imagination, is a picture of, and thereby
“replicate[s],” the underlying useful article of which they
are a part. Ante, at 1, 10. Hence the design features that
Varsity seeks to protect are not “capable of existing inde-
pendently o[f] the utilitarian aspects of the article.” 17
U. S. C. §101.
I
The relevant statutory provision says that the “design of
a useful article” is copyrightable “only if, and only to the
extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from,
2 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
and are capable of existing independently of, the utilitar-
ian aspects of the article.” Ibid. But what, we must ask,
do the words “identified separately” mean? Just when is a
design separate from the “utilitarian aspect of the [useful]
article?” The most direct, helpful aspect of the Court’s
opinion answers this question by stating:
“Nor could someone claim a copyright in a useful arti-
cle merely by creating a replica of that article in some
other medium—for example, a cardboard model of a
car. Although the replica could itself be copyright-
able, it would not give rise to any rights in the useful
article that inspired it.” Ante, at 7–8.
Exactly so. These words help explain the Court’s state-
ment that a copyrightable work of art must be “perceived
as a two- or three-dimensional work of art separate from
the useful article.” Ante, at 1, 17. They help clarify the
concept of separateness. Cf. 1 M. Nimmer & D. Nimmer,
Nimmer on Copyright §2A.08[A][1] (2016) (Nimmer) (de-
scribing courts’ difficulty in applying that concept). They
are consistent with Congress’ own expressed intent. 17
U. S. C. §101; H. R. Rep. No. 94–1476, pp. 55, 105 (1976)
(H. R. Rep.). And they reflect long held views of the
Copyright Office. See Compendium of U. S. Copyright
Office Practices §924.2(B) (3d ed. 2014), online at
http://www.copyright.gov/comp3/docs/compendium.pdf (as
last visited Mar. 7, 2017) (Compendium).
Consider, for example, the explanation that the House
Report for the Copyright Act of 1976 provides. It says:
“Unless the shape of an automobile, airplane, ladies’
dress, food processor, television set, or any other in-
dustrial product contains some element that, physically
or conceptually, can be identified as separable from
the utilitarian aspects of that article, the design would
not be copyrighted . . . .” H. R. Rep., at 55 (emphasis
added).
Cite as: 580 U. S. ____ (2017) 3
BREYER, J., dissenting
These words suggest two exercises, one physical, one
mental. Can the design features (the picture, the graphic,
the sculpture) be physically removed from the article (and
considered separately), all the while leaving the fully
functioning utilitarian object in place? If not, can one
nonetheless conceive of the design features separately
without replicating a picture of the utilitarian object? If
the answer to either of these questions is “yes,” then the
design is eligible for copyright protection. Otherwise, it is
not. The abstract nature of these questions makes them
sound difficult to apply. But with the Court’s words in
mind, the difficulty tends to disappear.
An example will help. Imagine a lamp with a circular
marble base, a vertical 10-inch tall brass rod (containing
wires) inserted off center on the base, a light bulb fixture
emerging from the top of the brass rod, and a lampshade
sitting on top. In front of the brass rod a porcelain Sia-
mese cat sits on the base facing outward. Obviously, the
Siamese cat is physically separate from the lamp, as it
could be easily removed while leaving both cat and lamp
intact. And, assuming it otherwise qualifies, the designed
cat is eligible for copyright protection.
Now suppose there is no long brass rod; instead the cat
sits in the middle of the base and the wires run up
through the cat to the bulbs. The cat is not physically
separate from the lamp, as the reality of the lamp’s con-
struction is such that an effort to physically separate the
cat and lamp will destroy both cat and lamp. The two are
integrated into a single functional object, like the similar
configuration of the ballet dancer statuettes that formed
the lamp bases at issue in Mazer v. Stein, 347 U. S. 201(1954). But we can easily imagine the cat on its own, as
did Congress when conceptualizing the ballet dancer. See
H. R. Rep., at 55 (the statuette in Mazer was “incorporated
into a product without losing its ability to exist inde-
pendently as a work of art”). In doing so, we do not create
4 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
a mental picture of a lamp (or, in the Court’s words, a
“replica” of the lamp), which is a useful article. We simply
perceive the cat separately, as a small cat figurine that
could be a copyrightable design work standing alone that
does not replicate the lamp. Hence the cat is conceptually
separate from the utilitarian article that is the lamp. The
pair of lamps pictured at Figures 1 and 2 in the Appendix
to this opinion illustrate this principle.
Case law, particularly case law that Congress and the
Copyright Office have considered, reflects the same ap-
proach. Congress cited examples of copyrightable design
works, including “a carving on the back of a chair” and “a
floral relief design on silver flatware.” H. R. Rep., at 55.
Copyright Office guidance on copyrightable designs in
useful articles include “an engraving on a vase,” “[a]rtwork
printed on a t-shirt,” “[a] colorful pattern decorating the
surface of a shopping bag,” “[a] drawing on the surface of
wallpaper,” and “[a] floral relief decorating the handle of a
spoon.” Compendium §924.2(B). Courts have found copy-
rightable matter in a plaster ballet dancer statuette encas-
ing the lamp’s electric cords and forming its base, see
Mazer, supra, as well as carvings engraved onto furniture,
see Universal Furniture Int’l, Inc. v. Collezione Europa
USA, Inc., 618 F. 3d 417, 431–435 (CA4 2010) (per curiam),
and designs on laminated floor tiles, see Home Leg-
end, LLC v. Mannington Mills, Inc., 784 F. 3d 1404, 1412–
1413 (CA11 2015). See generally Brief for Intellectual
Property Professors as Amici Curiae.
By way of contrast, Van Gogh’s painting of a pair of old
shoes, though beautifully executed and copyrightable as a
painting, would not qualify for a shoe design copyright.
See Appendix, fig. 3, infra; 17 U. S. C. §§113(a)–(b).
Courts have similarly denied copyright protection to ob-
jects that begin as three-dimensional designs, such as
measuring spoons shaped like heart-tipped arrows, Bona-
zoli v. R. S. V. P. Int’l, Inc., 353 F. Supp. 2d 218, 226–227
Cite as: 580 U. S. ____ (2017) 5
BREYER, J., dissenting
(RI 2005); candleholders shaped like sailboats, Design
Ideas, Ltd. v. Yankee Candle Co., 889 F. Supp. 2d 1119,
1128 (CD Ill. 2012); and wire spokes on a wheel cover,
Norris Industries, Inc. v. International Tel. & Tel. Corp.,
696 F. 2d 918, 922–924 (CA11 1983). None of these de-
signs could qualify for copyright protection that would
prevent others from selling spoons, candleholders, or
wheel covers with the same design. Why not? Because in
each case the design is not separable from the utilitarian
aspects of the object to which it relates. The designs
cannot be physically separated because they themselves
make up the shape of the spoon, candleholders, or wheel
covers of which they are a part. And spoons, candlehold-
ers, and wheel covers are useful objects, as are the old
shoes depicted in Van Gogh’s painting. More importantly,
one cannot easily imagine or otherwise conceptualize the
design of the spoons or the candleholders or the shoes
without that picture, or image, or replica being a picture of
spoons, or candleholders, or wheel covers, or shoes. The
designs necessarily bring along the underlying utilitarian
object. Hence each design is not conceptually separable
from the physical useful object.
The upshot is that one could copyright the floral design
on a soupspoon but one could not copyright the shape of
the spoon itself, no matter how beautiful, artistic, or es-
thetically pleasing that shape might be: A picture of the
shape of the spoon is also a picture of a spoon; the picture
of a floral design is not. See Compendium §924.2(B).
To repeat: A separable design feature must be “capable
of existing independently” of the useful article as a sepa-
rate artistic work that is not itself the useful article. If the
claimed feature could be extracted without replicating the
useful article of which it is a part, and the result would be
a copyrightable artistic work standing alone, then there is
a separable design. But if extracting the claimed features
would necessarily bring along the underlying useful arti-
6 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
cle, the design is not separable from the useful article. In
many or most cases, to decide whether a design or artistic
feature of a useful article is conceptually separate from
the article itself, it is enough to imagine the feature on its
own and ask, “Have I created a picture of a (useful part of
a) useful article?” If so, the design is not separable from
the useful article. If not, it is.
In referring to imagined pictures and the like, I am not
speaking technically. I am simply trying to explain an
intuitive idea of what separation is about, as well as how I
understand the majority’s opinion. So understood, the
opinion puts design copyrights in their rightful place. The
law has long recognized that drawings or photographs of
real world objects are copyrightable as drawings or photo-
graphs, but the copyright does not give protection against
others making the underlying useful objects. See, e.g.,
Burrow-Giles Lithographic Co. v. Sarony, 111 U. S. 53(1884). That is why a copyright on Van Gogh’s painting
would prevent others from reproducing that painting, but
it would not prevent others from reproducing and selling
the comfortable old shoes that the painting depicts. In-
deed, the purpose of §113(b) was to ensure that “ ‘copyright
in a pictorial, graphic, or sculptural work, portraying a
useful article as such, does not extend to the manufacture
of the useful article itself.’ ” H. R. Rep., at 105.
II
To ask this kind of simple question—does the design
picture the useful article?—will not provide an answer in
every case, for there will be cases where it is difficult to
say whether a picture of the design is, or is not, also a
picture of the useful article. But the question will avoid
courts focusing primarily upon what I believe is an un-
helpful feature of the inquiry, namely, whether the design
can be imagined as a “two- or three-dimensional work of
art.” Ante, at 1, 17. That is because virtually any indus-
Cite as: 580 U. S. ____ (2017) 7
BREYER, J., dissenting
trial design can be thought of separately as a “work of art”:
Just imagine a frame surrounding the design, or its being
placed in a gallery. Consider Marcel Duchamp’s “ready-
mades” series, the functional mass-produced objects he
designated as art. See Appendix, fig. 4, infra. What is
there in the world that, viewed through an esthetic lens,
cannot be seen as a good, bad, or indifferent work of art?
What design features could not be imaginatively repro-
duced on a painter’s canvas? Indeed, great industrial
design may well include design that is inseparable from
the useful article—where, as Frank Lloyd Wright put it,
“form and function are one.” F. Wright, An Autobiography
146 (1943) (reprint 2005). Where they are one, the de-
signer may be able to obtain 15 years of protection
through a design patent. 35 U. S. C. §§171, 173; see also
McKenna & Strandburg, Progress and Competition in
Design, 17 Stan. Tech. L. Rev. 1, 48–51 (2013). But, if
they are one, Congress did not intend a century or more of
copyright protection.
III
The conceptual approach that I have described reflects
Congress’ answer to a problem that is primarily practical
and economic. Years ago Lord Macaulay drew attention to
the problem when he described copyright in books as a
“tax on readers for the purpose of giving a bounty to writ-
ers.” 56 Parl. Deb. (3d Ser.) (1841) 341, 350. He called
attention to the main benefit of copyright protection,
which is to provide an incentive to produce copyrightable
works and thereby “promote the Progress of Science and
useful Arts.” U. S. Const., Art. I, §8, cl. 8. But Macaulay
also made clear that copyright protection imposes costs.
Those costs include the higher prices that can accompany
the grant of a copyright monopoly. They also can include
(for those wishing to display, sell, or perform a design,
film, work of art, or piece of music, for example) the costs
8 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
of discovering whether there are previous copyrights, of
contacting copyright holders, and of securing permission
to copy. Eldred v. Ashcroft, 537 U. S. 186, 248–252 (2003)
(BREYER, J., dissenting). Sometimes, as Thomas Jefferson
wrote to James Madison, costs can outweigh “the benefit
even of limited monopolies.” Letter from Thomas Jeffer-
son to James Madison (July 31, 1788), in 13 Papers of
Thomas Jefferson 443 (J. Boyd ed. 1956) (Jefferson Let-
ter). And that is particularly true in light of the fact that
Congress has extended the “limited Times” of protection,
U. S. Const., Art. I, §8, cl. 8, from the “14 years” of Jeffer-
son’s day to potentially more than a century today. Jeffer-
son Letter 443; see also Eldred, supra, at 246–252 (opinion
of BREYER, J.).
The Constitution grants Congress primary responsibil-
ity for assessing comparative costs and benefits and draw-
ing copyright’s statutory lines. Courts must respect those
lines and not grant copyright protection where Congress
has decided not to do so. And it is clear that Congress has
not extended broad copyright protection to the fashion
design industry. See, e.g., 1 Nimmer §2A.08[H][3][c]
(describing how Congress rejected proposals for fashion
design protection within the 1976 Act and has rejected
every proposed bill to this effect since then); Esquire, Inc.
v. Ringer, 591 F. 2d 796, 800, n. 12 (CADC 1978) (observ-
ing that at the time of the 1976 Copyright Act, Congress
had rejected every one of the approximately 70 design
protection bills that had been introduced since 1914); e.g.,
H. R. 5055, 109th Cong., 2d Sess.: “To Amend title 17,
United States Code, to provide protection for fashion
design” (introduced Mar. 30, 2006; unenacted). Congress
has left “statutory . . . protection . . . largely unavailable
for dress designs.” 1 Nimmer §2A.08[H][3][a]; Raustiala &
Sprigman, The Piracy Paradox: Innovation and Intellec-
tual Property in Fashion Design, 92 Va. L. Rev. 1687, 1698–
1705 (2006).
Cite as: 580 U. S. ____ (2017) 9
BREYER, J., dissenting
Congress’ decision not to grant full copyright protection
to the fashion industry has not left the industry without
protection. Patent design protection is available. 35
U. S. C. §§171, 173. A maker of clothing can obtain
trademark protection under the Lanham Act for signature
features of the clothing. 15 U. S. C. §1051 et seq. And a
designer who creates an original textile design can receive
copyright protection for that pattern as placed, for exam-
ple, on a bolt of cloth, or anything made with that cloth.
E.g., Compendium §924.3(A)(1). “[T]his [type of] claim . . .
is generally made by the fabric producer rather than the
garment or costume designer,” and is “ordinarily made
when the two-dimensional design is applied to the textile
fabric and before the garment is cut from the fabric.” 56
Fed. Reg. 56531 (1991).
The fashion industry has thrived against this backdrop,
and designers have contributed immeasurably to artistic
and personal self-expression through clothing. But a
decision by this Court to grant protection to the design of a
garment would grant the designer protection that Con-
gress refused to provide. It would risk increased prices
and unforeseeable disruption in the clothing industry,
which in the United States alone encompasses nearly $370
billion in annual spending and 1.8 million jobs. Brief for
Council of Fashion Designers of America, Inc., as Amicus
Curiae 3–4 (citing U. S. Congress, Joint Economic Com-
mittee, The New Economy of Fashion 1 (2016)). That is
why I believe it important to emphasize those parts of the
Court’s opinion that limit the scope of its interpretation.
That language, as I have said, makes clear that one may
not “claim a copyright in a useful article merely by creat-
ing a replica of that article in some other medium,” which
“would not give rise to any rights in the useful article that
inspired it.” Ante, at 7–8.
10 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
IV
If we ask the “separateness” question correctly, the
answer here is not difficult to find. The majority’s opinion,
in its appendix, depicts the cheerleader dress designs that
Varsity submitted to the Copyright Office. Can the design
features in Varsity’s pictures exist separately from the
utilitarian aspects of a dress? Can we extract those fea-
tures as copyrightable design works standing alone, with-
out bringing along, via picture or design, the dresses of
which they constitute a part?
Consider designs 074, 078, and 0815. They certainly
look like cheerleader uniforms. That is to say, they look
like pictures of cheerleader uniforms, just like Van Gogh’s
old shoes look like shoes. I do not see how one could see
them otherwise. Designs 299A and 2999B present slightly
closer questions. They omit some of the dresslike context
that the other designs possess. But the necklines, the
sleeves, and the cut of the skirt suggest that they too are
pictures of dresses. Looking at all five of Varsity’s pic-
tures, I do not see how one could conceptualize the design
features in a way that does not picture, not just artistic
designs, but dresses as well.
Were I to accept the majority’s invitation to “imagina-
tively remov[e]” the chevrons and stripes as they are ar-
ranged on the neckline, waistline, sleeves, and skirt of
each uniform, and apply them on a “painter’s canvas,”
ante, at 10, that painting would be of a cheerleader’s dress.
The esthetic elements on which Varsity seeks protection
exist only as part of the uniform design—there is nothing
to separate out but for dress-shaped lines that replicate
the cut and style of the uniforms. Hence, each design is
not physically separate, nor is it conceptually separate,
from the useful article it depicts, namely, a cheerleader’s
dress. They cannot be copyrighted.
Varsity, of course, could have sought a design patent for
its designs. Or, it could have sought a copyright on a
Cite as: 580 U. S. ____ (2017) 11
BREYER, J., dissenting
textile design, even one with a similar theme of chevrons
and lines.
But that is not the nature of Varsity’s copyright claim.
It has instead claimed ownership of the particular
“ ‘treatment and arrangement’ ” of the chevrons and lines
of the design as they appear at the neckline, waist, skirt,
sleeves, and overall cut of each uniform. Brief for Re-
spondents 50. The majority imagines that Varsity submit-
ted something different—that is, only the surface decora-
tions of chevrons and stripes, as in a textile design. As the
majority sees it, Varsity’s copyright claim would be the
same had it submitted a plain rectangular space depicting
chevrons and stripes, like swaths from a bolt of fabric.
But considered on their own, the simple stripes are plainly
unoriginal. Varsity, then, seeks to do indirectly what it
cannot do directly: bring along the design and cut of the
dresses by seeking to protect surface decorations whose
“treatment and arrangement” are coextensive with that
design and cut. As Varsity would have it, it would prevent
its competitors from making useful three-dimensional
cheerleader uniforms by submitting plainly unoriginal
chevrons and stripes as cut and arranged on a useful
article. But with that cut and arrangement, the resulting
pictures on which Varsity seeks protection do not simply
depict designs. They depict clothing. They depict the
useful articles of which the designs are inextricable parts.
And Varsity cannot obtain copyright protection that would
give them the power to prevent others from making those
useful uniforms, any more than Van Gogh can copyright
comfortable old shoes by painting their likeness.
I fear that, in looking past the three-dimensional design
inherent in Varsity’s claim by treating it as if it were no
more than a design for a bolt of cloth, the majority has lost
sight of its own important limiting principle. One may not
“claim a copyright in a useful article merely by creating a
replica of that article in some other medium,” such as in a
12 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
picture. Ante, at 7. That is to say, one cannot obtain a
copyright that would give its holder “any rights in the
useful article that inspired it.” Ante, at 8.
With respect, I dissent.
Cite as: 580 U. S. (2017) 13
BREYER, J., dissenting
14 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.
BREYER, J., dissenting
Cite as: 580 U. S. (2017) 15
BREYER, J., dissenting