Star Athletica, LLC v. Varsity Brands, Inc./Concurrence Ginsburg

by Ruth Bader Ginsburg

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]

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 otherwise." §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. Varsity’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]

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 reproduce the designs on useful articles.[4]

Notes

1. Courts "have struggled mightily to formulate a test" for the separability analysis. 799 F. 3d 468, 484 (CA6 2015); see 2 W. Patry, Copyright §3:136, p. 3–420 (2016) (noting "widespread interpretative disarray" 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 otherwise 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 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 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)." Appendix, infra, at 4–7, 9–10, 12–14.
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 Copyright Act "expressly provides that PGS designs do not lose their protection when they appear ‘in or on’ a useful article," quoting §113(a)); id., at 52 (disclaiming the need for separability analysis because the designs are themselves PGS works).

APPENDIX

[Eleven of Varsity Brand's copyright registrations are enclosed with added arrows pointing to their labelling as "2-dimensional artwork" or "fashion design (artwork)"]