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

405

Syllabus

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 protection as artistic works if those features “can be identifed separately from, and are capable of existing independently of, the utilitarian aspects 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 colorful 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 District 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 “identifed separately” and were “capable of existing independently” of the uniforms under § 101.

Held: 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 fxed in some other tangible medium of ex- pression—if it were imagined separately from the useful article into which it is incorporated. That test is satisfed here. Pp. 410–424.

(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 useful article” rather than “designs of a useful article.” But this argument is inconsistent with § 101's text. “[P]ictorial” and “graphic” denote two- dimensional features such as pictures, paintings, or drawings. Thus, by providing protection for “pictorial, graphical, and sculptural works” incorporated into the “design of a useful article,” § 101 necessarily con- templates that such a design can include two-dimensional features.

This Court will not adjudicate in the frst instance the Government's distinct argument against applying separability analysis, which was nei- ther raised below nor advanced here by any party. Pp. 412–413.

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(b) Whether a feature incorporated into a useful article “can be identi- fed separately from,” and is “capable of existing independently of,” the article's “utilitarian aspects” is a matter of “statutory interpretation.” Mazer v. Stein, 347 U. S. 201, 214. Pp. 413–417.

(1) Section 101's separate-identifcation 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 requirement, the feature must be able to exist as its own pictorial, graphic, or sculp- tural work once it is imagined apart from the useful article. If the feature could not exist as a pictorial, graphic, or sculptural work on its own, it is simply one of the article's utilitarian aspects. 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 medium. Pp. 414–415.

(2) The statute as a whole confrms this interpretation. Section

101, which protects art frst fxed in the medium of a useful article, is essentially the mirror image of § 113(a), which protects art frst fxed in a medium other than a useful article and subsequently applied to a use- ful article. Together, these provisions make clear that copyright pro- tection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles. P. 415.

(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 Copyright Offce 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 Offce enacted a regulation implementing Mazer's holding that anticipated the lan- guage of § 101, thereby introducing the modern separability test to copy- right law. Congress essentially lifted the language from those post- Mazer regulations and placed it in § 101 of the 1976 Act. Pp. 415–417. (c) Applying the proper test here, the surface decorations on the cheerleading uniforms are separable and therefore eligible for copyright protection. First, the decorations can be identifed 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. Imagina-

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tively removing the decorations from the uniforms and applying them in another medium also would not replicate the uniform itself.

The dissent argues that the decorations are ineligible for copyright protection because, when imaginatively extracted, they form a picture of a cheerleading uniform. Petitioner similarly claims that the decora- tions cannot be copyrighted because, even when extracted from the use- ful article, they retain the outline of a cheerleading uniform. But this is not a bar to copyright. Just as two-dimensional fne art correlates to the shape of the canvas on which it is painted, two-dimensional ap- plied 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 uni- forms. Respondents may prohibit the reproduction only of the surface designs on a uniform or in any other medium of expression. Respond- ents 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. 417–419.

(d) None of the objections raised by petitioner or the Government is meritorious. Pp. 419–424.

(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 imag- ined 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 frst 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 Mazer, and it is consistent with the statute's explicit protection of “applied art.” In rejecting petitioner's view, the Court necessarily abandons the distinction between “physical” and “conceptual” separability adopted by some courts and commentators.

Pp. 419–422.

(2) Petitioner also suggests incorporating two “objective” compo-

nents into the test—one requiring consideration of evidence of the cre- ator's design methods, purposes, and reasons, and one looking to the feature's marketability. The Court declines to incorporate these com- ponents because neither is grounded in the statute's text. Pp. 422–423.

(3) Finally, petitioner claims that protecting surface decorations is

inconsistent with Congress' intent to entirely exclude industrial design from copyright. But Congress has given limited copyright protection to certain features of industrial design. Approaching the statute with presumptive hostility toward protection for industrial design would un-

408 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.

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dermine that choice. In any event, the test adopted here does not render the underlying uniform eligible for copyright protection. Pp. 423–424.

799 F. 3d 468, affrmed.

Thomas, J., delivered the opinion of the Court, in which Roberts, C. J., and Alito, Sotomayor, and Kagan, JJ., joined. Ginsburg, J., fled an opinion concurring in the judgment, post, p. 425. Breyer, J., fled a dis- senting opinion, in which Kennedy, J., joined, post, p. 439.

John J. Bursch argued the cause for petitioner. With him on the briefs were Matthew T. Nelson, Conor B. Dugan, Ste- ven M. Crosby, Stephen E. Feldman, Michael F. Rafferty, and Emily Hamm Huseth.

William M. Jay argued the cause for respondents. With him on the brief were Brian T. Burgess, Grady M. Garrison, Adam S. Baldr idge, Thomas Kjellberg, and Robert D.

Carroll.

Eric J. Feigin argued the cause for the United States as amicus curiae urging affrmance. With him on the brief were Acting Solicitor General Gershengorn, Principal Dep- uty Assistant Attorney General Mizer, Deputy Solicitor General Stewart, Mark R. Freeman, and Sarang Vijay Damle.*

*Briefs of amici curiae urging reversal were fled for Public Knowledge et al. by Charles Duan; for the Royal Manticorn Navy: The Offcial Honor Harrington Fan Association, Inc., by Judith S. Sherwin; and for Christo- pher Buccafusco et al. by Meir Feder and Jeanne C. Fromer, pro se.

Briefs of amici curiae urging affrmance were fled for Chosun Interna- tional, Inc., by Anthony H. Handal; for the Council of Fashion Designers of America, Inc., by Charles E. Boulbol; for the Fashion Law Institute et al. by Michelle Mancino Marsh; for the Intellectual Property Owners Association by Kevin Rhodes, Steven W. Miller, David Leichtman, and Sherli Furst; and for Jeannie Suk Gersen et al. by Scott B. Wilkens, Mat- thew S. Hellman, and C. Scott Hemphill, pro se.

Briefs of amici curiae were fled for the American Intellectual Property Law Association by Denise W. DeFranco, Amie Peele Carter, and Nicho- las J. Nelson; for the Intellectual Property Law Association of Chicago by David L. Applegate, Jeffrey B. Burgan, and Charles W. Shifey; for Intellectual Property Professors by Mark Lemley; and for the New York Intellectual Property Law Association by Lauren B. Emerson, Walter

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409

Opinion of the Court 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 be- tween art and industrial design, however, is often diffcult to draw. This is particularly true when an industrial design incorporates artistic elements. Congress has afforded lim- ited 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 identifed separately from, and are capable of existing independently 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- identifcation and independent-existence requirements. 578

U. S. 959 (2016). We hold that a feature incorporated into

the design of a useful article is eligible for copyright protec- tion 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 sculptural work—either on its own or fxed in some other tangible medium of expression—if it were imagined sepa- rately from the useful article into which it is incorporated.

Because that test is satisfed in this case, we affrm.

Respondents Varsity Brands, Inc., Varsity Spirit Corpora- tion, and Varsity Spirit Fashions & Supplies, Inc., design, make, and sell cheerleading uniforms. Respondents have obtained or acquired more than 200 U. S. copyright registra- tions for two-dimensional designs appearing on the surface of their uniforms and other garments. These designs are primarily “combinations, positionings, and arrangements of

E. Hanley, Jr., Charles R. Macedo, David P. Goldberg, Mitchell C. Stein,

and Joseph Farco.

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elements” that include “chevrons . . . , lines, curves, stripes, angles, diagonals, inverted [chevrons], 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 in- fringing their copyrights in the fve designs. The District Court entered summary judgment for petitioner on respond- ents' 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 “utilitar- ian,” function of identifying the garments as “cheerleading uniforms” and therefore could not be “physically or conceptu- ally” 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 identifable” because the designs “and a blank cheerleading uniform can appear `side by side'—one as a graphic design, and one as a cheerleading uniform.” Id., at 491 (quoting Compendium of U. S. Copyright Offce Prac- tices § 924.2(B) (3d ed. 2014) (Compendium)). And it deter- mined that the designs were “ `capable of existing independ- ently' ” 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, be- cause “identifying the wearer as a cheerleader” is a utilitar- ian function of a cheerleading uniform and the surface de- signs were “integral to” achieving that function, the designs were inseparable from the uniforms. Id., at 495–496.

The frst element of a copyright-infringement claim is “ownership of a valid copyright.” Feist Publications, Inc.

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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 defnes copyrightable subject matter as “original works of authorship fxed 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 defnes to include “two-dimensional and three-dimensional works of fne, 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 “ `fxed' in a tangible medium of expression when it[ is] embodi[ed] in a” “material objec[t] . . . from which the work can be perceived, reproduced, or otherwise communicated.” Ibid. (defnitions of “fxed” and “copies”).

The Copyright Act also establishes a special rule for copy- righting a pictorial, graphic, or sculptural work incorporated into a “useful article,” which is defned as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Ibid. The statute does not protect useful articles as such.

Rather, “the design of a useful article” is “considered a picto- rial, graphical, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identifed separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Ibid.

Courts, the Copyright Offce, and commentators have de- scribed the analysis undertaken to determine whether a fea- ture can be separately identifed from, and exist independ- ently 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

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protection as separable features of the design of those cheer- leading uniforms.

As an initial matter, we must address whether separability analysis is necessary in this case.

1

Respondents argue that “[s]eparability is only implicated when a [pictorial, graphic, or sculptural] work is the `design of a useful article.' ” Brief for Respondents 25. They con- tend that the surface decorations in this case are “two- dimensional graphic designs that appear on useful articles,” 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) (“Courts looking at two-dimensional design claims should not apply the sepa- rability 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 Respondents 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 combina- tion” of “details” or “features” that “go to make up” the use- ful article. 3 Oxford English Dictionary 244 (def. 7, frst list- ing) (1933) (OED). Furthermore, the words “pictorial” and “graphic” include, in this context, two-dimensional features such as pictures, paintings, or drawings. See 4 id., at 359 (defning “[g]raphic” to mean “[o]f or pertaining to drawing or painting”); 7 id., at 830 (defning “[p]ictorial” to mean “of or pertaining to painting or drawing”). And the statute ex- pressly defnes “[p]ictorial, graphical, and sculptural works” to include “two-dimensional . . . works of . . . art.” § 101.

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The statute thus provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” fea- tures, 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 argument against applying separability analysis in this case, which re- spondents do not and have not advanced. As part of their copyright registrations for the designs in this case, respond- ents deposited with the Copyright Offce drawings and photographs depicting the designs incorporated onto cheer- leading uniforms. App. 213–219; Appendix, infra. The Government argues that, assuming the other statutory re- quirements were met, respondents obtained a copyright in the deposited drawings and photographs and have simply re- produced 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 Government urges, separability analysis is unnecessary on the record in this case. We generally do not entertain arguments that were not raised below and that are not advanced in this Court by any party, Burwell v. Hobby Lobby Stores, Inc., 573 U. S.

682, 721 (2014), because “[i]t is not the Court's usual practice to adjudicate either legal or predicate factual questions in the frst instance,” CRST Van Expedited, Inc. v. EEOC, 578

U. S. 419, 435 (2016). We decline to depart from our usual

practice here.

We must now decide when a feature incorporated into a useful article “can be identifed separately from” and is “ca- pable 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 in- terpretation.” Mazer v. Stein, 347 U. S. 201, 214 (1954).

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“The controlling principle in this case is the basic and unex- ceptional rule that courts must give effect to the clear mean- ing 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 quo- tation marks omitted). We do not, however, limit this in- quiry to the text of § 101 in isolation. “[I]nterpretation of a phrase of uncertain reach is not confned to a single sentence when the text of the whole statute gives instruction as to its meaning.” Maracich v. Spears, 570 U. S. 48, 65 (2013). We thus “look to the provisions of the whole law” to determine § 101's meaning. United States v. Heirs of Boisdoré, 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 arti- cle” is eligible for copyright protection if it (1) “can be iden- tifed 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 diffcult to satisfy. The decisionmaker must determine that the separately identifed feature has the capacity to exist apart from the utilitarian aspects of the article. See 2 OED 88 (def. 5) (defning “[c]apable” of as “[h]aving the needful capacity, power, or ftness for”). In other words, the feature must be able to exist as its own pictorial, graphic, or sculp- tural work as defned 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,

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or sculptural feature of that article, 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. Although the rep- lica could itself be copyrightable, it would not give rise to any rights in the useful article that inspired it.

2

The statute as a whole confrms 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 clarifes that this right “in- cludes the right to reproduce the [copyrighted] work in or on any kind of article, whether useful or otherwise.” § 113(a).

Section 101 is, in essence, the mirror image of § 113(a).

Whereas § 113(a) protects a work of authorship frst fxed in some tangible medium other than a useful article and subse- quently applied to a useful article, § 101 protects art frst fxed 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 freestanding art or as features of useful arti- cles. 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 fxed in some tangible medium other than a useful article before being applied to a useful article.

This interpretation is also consistent with the history of the Copyright Act. In Mazer, a case decided under the 1909

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Copyright Act, the respondents copyrighted a statuette de- picting 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 statuette were sold both as lamp bases and separately as statuettes. Id., at 203. The petitioners copied the statuette and sold lamps with the statuette as the base. They defended against the respondents' infringement suit by arguing that the respond- ents 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 Copy- right Offce's regulation extending copyright protection to works of art that might also serve a useful purpose. See ibid. (approving 37 CFR § 202.8(a) (1949) (protecting “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 copy- right 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 registration of a work of art published as an element in a manufactured arti- cle, 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 interpreted 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 frst as part of a useful article.

Shortly thereafter, the Copyright Offce enacted a regula- tion implementing the holdings of Mazer. See 1 Nimmer § 2A.08[B][1][b] (2016). As amended, the regulation intro-

“If the sole intrinsic function of an article is its utility, the fact that the article is unique and attractively shaped

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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 representation, which can be identifed 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 protec- tion 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 inter- prets §§ 101 and 113 in a way that would afford copyright protection to the statuette in Mazer regardless of whether it was frst created as a standalone sculptural work or as the base of the lamp. See 347 U. S., at 218–219.

In sum, a feature of the design of a useful article is eligible for copyright if, when identifed and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fxed in some other tangible medium.

Applying this test to the surface decorations on the cheer- leading uniforms is straightforward. First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerlead- ing 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 replicat- ing the uniform. See App. 273–279. The decorations are

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therefore separable from the uniforms and eligible for copy- right protection.1

The dissent argues that the designs are not separable be- cause imaginatively removing them from the uniforms and placing them in some other medium of expression—a canvas, for example—would create “pictures of cheerleader uni- forms.” Post, at 447 (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 Peti- tioner 48–49.

This is not a bar to copyright. Just as two-dimensional fne art corresponds to the shape of the canvas on which it is painted, two-dimensional applied art correlates to the con- tours 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 frst 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 entire

1 We do not today hold that the surface decorations are copyrightable.

We express no opinion on whether these works are suffciently 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 satisfed.

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article. The statute does not support that distinction, nor can it be reconciled with the dissent's recognition that “art- work printed on a t-shirt” could be protected. Post, at 442 (brackets and 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 fxed in the tangible medium of the uniform fab- ric. Even 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 manu- facturing 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 sur- face designs in any tangible medium of expression—a uni- form or otherwise.2

Petitioner and the Government raise several objections to the approach we announce today. None is meritorious.

1

Petitioner frst 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 copyright- able work and if the useful article from which it was ex- tracted would remain equally useful. In other words, copy-

2 The dissent suggests that our test would lead to the copyrighting of shovels. Post, at 444; Appendix to opinion of Breyer, J., fg. 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.

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right 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 arti- cle,” 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 uniforms' “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 uniform. 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 re- moved 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 cheer- leading uniform is unnecessary. The focus of the separabil- ity inquiry is on the extracted feature and not on any aspects of the useful article that remain after the imaginary extrac- tion. 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 use- ful 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 functioning useful article at all, much less an equally useful one. In-

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deed, such a requirement would deprive the Mazer statuette of protection had it been created frst 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 fawed 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 stat- ute expressly protects two- and three-dimensional “applied art.” § 101. “Applied art” is art “employed in the decora- tion, design, or execution of useful objects,” Webster'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) (defning “applied” as “[p]ut to practical use”). An artistic feature that would be eligible for copyright protection on its own cannot lose that protec- tion simply because it was frst 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 pro- tectable features are those that play absolutely no role in an article's function, we would effectively abrogate the rule of Mazer and read “applied art” out of the statute.

Because we reject the view that a useful article must re- main after the artistic feature has been imaginatively sepa- rated from the article, we necessarily abandon the distinction

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between “physical” and “conceptual” separability, 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 physi- cally 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 concep- tual 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 concep- tual undertaking. Because separability does not require the underlying useful article to remain, the physical-conceptual distinction is unnecessary.

2

Petitioner next argues that we should incorporate two “ob- jective” components, Reply Brief 9, into our test to provide guidance to the lower courts: (1) “whether the design ele- ments can be identifed as refecting the designer's artistic judgment exercised independently of functional infuence,” Brief for Petitioner 34 (emphasis deleted; internal quotation marks omitted), and (2) whether “there is [a] substantial like- lihood that the pictorial, graphic, or sculptural feature would still be marketable to some signifcant segment of the com- munity without its utilitarian function,” id., at 35 (emphasis deleted; internal quotation marks omitted).

We reject this argument because neither consideration is grounded in the text of the statute. The frst would require the decisionmaker to consider evidence of the creator's de- sign methods, purposes, and reasons. Id., at 48. The stat-

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ute's text makes clear, however, that our inquiry is limited to how the article and feature are perceived, not how or why they were designed. See Brandir Int'l, Inc. v. Cascade Pa- cifc Lumber Co., 834 F. 2d 1142, 1152 (CA2 1987) (Winter, J., concurring in part and dissenting in part) (The statute “expressly states that the legal test is how the fnal article is perceived, not how it was developed through various stages”).

The same is true of marketability. Nothing in the statute 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 popu- lar art over other forms, or to substitute judicial aesthetic preferences for the policy choices embodied in the Copyright Act. See Bleistein v. Donaldson Lithographing Co., 188

U. S. 239, 251 (1903) (“It would be a dangerous undertaking

for persons trained only to the law to constitute themselves fnal judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits”).

3

Finally, petitioner argues that allowing the surface decora- tions to qualify as a “work of authorship” is inconsistent 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 protec- tion for industrial designs, including clothing, when it enacted the 1976 Act, see Brief for Petitioner 9–11 (citing

S. 22, Tit. II, 94th Cong., 2d Sess., 122 Cong. Rec. 3856–3859

(1976)), and that it has enacted laws protecting designs for specifc 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 rea- sons that Congress intends to channel intellectual property claims for industrial design into design patents. It there-

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fore urges us to approach this question with a presumption against copyrightability. Id., at 27.

We do not share petitioner's concern. As an initial mat- ter, “[c]ongressional inaction lacks persuasive signifcance” in most circumstances. Pension Beneft Guaranty Corpo- ration v. LTV Corp., 496 U. S. 633, 650 (1990) (internal quota- tion marks omitted). Moreover, we have long held that de- sign patent and copyright are not mutually exclusive. See Mazer, 347 U. S., at 217. Congress has provided for limited copyright protection for certain features of industrial design, and approaching the statute with presumptive hostility to- ward protection for industrial design would undermine Con- gress' 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.

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 affrmed.

It is so ordered.

[Appendix to opinion of the Court follows this page.]

Design 299A Design 299B Design 074 Design 078 Design 0815 Cite as: 580 U. S. 405 (2017)

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Ginsburg, J., concurring in judgment 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 Con- sideration 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 re- produced 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 fne, 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

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 sep-

arability 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) (sepa- rability 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 418, n. 1; 17 U. S. C. § 102(a) (“Copyright protection subsists, in accordance with this title, in original works of authorship fxed in any tangible me- dium 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 448, however, I note this Court's recognition that “the requisite level of creativity [for copyrightability] is extremely low; even a slight amount will suffce,” 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).

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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. Varsi- ty's designs frst 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 uniforms; its regis- tration statements claimed “2-Dimensional artwork” and “fabric design (artwork).” Appendix, infra, at 428–431, 433– 434, 436– 438. 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 arti- cles meet for separability determination under § 101; they

3 That Varsity's designs can be placed on jackets or T-shirts without replicating a cheerleader's uniform supports their qualifcation as fabric designs. The dissent acknowledges that fabric designs are copyrightable, but maintains that Varsity's designs do not count because Varsity's sub- missions depict clothing, not fabric designs. Post, at 448–449. But regis- trants claiming copyrightable designs may submit drawings or photos of those designs as they appear on useful articles. See Compendium of U. S.

Copyright Offce Practices § 1506 (3d ed. 2014) (“To register a copyright- able 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 (art- work).” Appendix, infra, at 428–431, 433–434, 436–438.

The dissent also acknowledges that artwork printed on a T-shirt is copy- rightable. Post, at 441–442. 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 ft comfortably within the Copyright Offce guidance featured by the dissent. See post, at 441–442 (citing Compendium of U. S.

Copyright Offce Practices, supra, § 924.2(B)).

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are standalone PGS works that may gain copyright protec- tion as such, including the exclusive right to reproduce the designs on useful articles.4

4 The majority declines to address this route to decision because, it says, Varsity has not advanced it. Ante, at 413. I read Varsity's brief differ- ently. 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 (disclaim- ing the need for separability analysis because the designs are themselves PGS works).

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Appendix to opinion of Ginsburg, J.

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439

Breyer, J., dissenting 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., submitted to the Copyright Offce are eligible for copyright protection.

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 409.

Look at the designs that Varsity submitted to the Copy- right Offce. 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 “rep- licate[s],” the underlying useful article of which they are a part. Ante, at 409, 417. 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

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 identifed separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Ibid. But what, we must ask, do the words “identifed separately” mean? Just when is a de- sign separate from the “utilitarian aspect of the [useful] arti- cle?” The most direct, helpful aspect of the Court's opinion

“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- though the replica could itself be copyrightable, it would not give rise to any rights in the useful article that in- spired it.” Ante, at 415.

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Exactly so. These words help explain the Court's statement that a copyrightable work of art must be “perceived as a two- or three-dimensional work of art separate from the use- ful article.” Ante, at 409, 424. They help clarify the con- cept of separateness. Cf. 1 M. Nimmer & D. Nimmer, Nim- mer on Copyright § 2A.08[A][1] (2016) (Nimmer) (describing courts' diffculty in applying that concept). They are con- sistent 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 refect long held views of the Copyright Offce.

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 Re-

“Unless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other indus- trial product contains some element that, physically or conceptually, can be identifed as separable from the utilitarian aspects of that article, the design would not be copyrighted . . . .” H. R. Rep., at 55 (emphasis added).

These words suggest two exercises, one physical, one mental.

Can the design features (the picture, the graphic, the sculp- ture) be physically removed from the article (and considered separately), all the while leaving the fully functioning utili- tarian object in place? If not, can one nonetheless conceive of the design features separately without replicating a pic- ture of the utilitarian object? If the answer to either of these questions is “yes,” then the design is eligible for copy- right protection. Otherwise, it is not. The abstract nature of these questions makes them sound diffcult to apply. But with the Court's words in mind, the diffculty tends to disappear.

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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 fxture emerging from the top of the brass rod, and a lampshade sitting on top. In front of the brass rod a porcelain Siamese 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, as- suming it otherwise qualifes, 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 construction 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 confguration 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 conceptual- izing the ballet dancer. See H. R. Rep., at 55 (the statuette in Mazer was “incorporated into a product without losing its ability to exist independently as a work of art”). In doing so, we do not create a mental picture of a lamp (or, in the Court's words, a “replica” of the lamp), which is a useful arti- cle. We simply perceive the cat separately, as a small cat fgurine that could be a copyrightable design work standing alone that does not replicate the lamp. Hence the cat is con- ceptually separate from the utilitarian article that is the lamp. The pair of lamps pictured at fgures 1 and 2 in the appendix to this opinion illustrate this principle.

Case law, particularly case law that Congress and the Copyright Offce have considered, refects the same ap- proach. Congress cited examples of copyrightable design works, including “a carving on the back of a chair” and “a foral relief design on silver fatware.” H. R. Rep., at 55.

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Copyright Offce 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] foral relief decorating the handle of a spoon.” Com- pendium § 924.2(B). Courts have found copyrightable mat- ter in a plaster ballet dancer statuette encasing the lamp's electric cords and forming its base, see Mazer, supra, as well as carvings engraved onto furniture, see Universal Furni- ture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F. 3d 417, 431–435 (CA4 2010) (per curiam), and designs on laminated foor tiles, see Home Legend, 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, fg. 3, infra; 17 U. S. C. §§ 113(a)–(b). Courts have similarly denied copyright protection to objects that begin as three-dimensional designs, such as measuring spoons shaped like heart-tipped arrows, Bonazoli v. R. S. V.

P. Int'l, Inc., 353 F. Supp. 2d 218, 226–227 (RI 2005); candle-

holders 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. In- ternational Tel. & Tel. Corp., 696 F. 2d 918, 922–924 (CA11 1983). None of these designs 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 them- selves make up the shape of the spoon, candleholders, or wheel covers of which they are a part. And spoons, candle- holders, and wheel covers are useful objects, as are the old shoes depicted in Van Gogh's painting. More importantly,

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one cannot easily imagine or otherwise conceptualize the de- sign 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 foral design on a soupspoon but one could not copyright the shape of the spoon itself, no matter how beautiful, artistic, or esthetically pleasing that shape might be: A picture of the shape of the spoon is also a picture of a spoon; the picture of a foral de- sign 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 separate 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 article, 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 arti- cle?” If so, the design is not separable from the useful arti- cle. If not, it is.

In referring to imagined pictures and the like, I am not speaking technically. I am simply trying to explain an intu- itive idea of what separation is about, as well as how I under- stand 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 photographs, but the copyright does not give protection against others making

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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 oth- ers from reproducing and selling the comfortable old shoes that the painting depicts. Indeed, 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.

To ask this kind of simple question—does the design pic- ture the useful article?—will not provide an answer in every case, for there will be cases where it is diffcult 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 focus- ing primarily upon what I believe is an unhelpful feature of the inquiry, namely, whether the design can be imagined as a “two- or three-dimensional work of art.” Ante, at 409,

424. That is because virtually any industrial 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 “readymades” series, the func- tional mass-produced objects he designated as art. See Ap- pendix, fg. 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 reproduced on a painter's canvas? Indeed, great industrial design may well include design that is insep- arable 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 designer may be able to obtain 15 years of protection through a design patent. 35 U. S. C. §§ 171, 173; see also Mc- Kenna & Strandburg, Progress and Competition in Design, 17 Stan. Tech. L. Rev. 1, 48–51 (2013). But, if they are one,

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445

Breyer, J., dissenting Congress did not intend a century or more of copyright protection.

The conceptual approach that I have described refects 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 writers.” 56 Parl. Deb. (3d Ser.) (1841) 341, 350. He called attention to the main beneft of copyright protection, which is to pro- vide 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 in- clude the higher prices that can accompany the grant of a copyright monopoly. They also can include (for those wish- ing to display, sell, or perform a design, flm, work of art, or piece of music, for example) the costs of discovering whether there are previous copyrights, of contacting copyright hold- ers, 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 beneft even of limited monopolies.” Letter from Thomas Jefferson to James Madison (July 31, 1788), in 13 Papers of Thomas Jefferson 443 (J. Boyd ed. 1956) (Jefferson Letter). 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 Jefferson's day to potentially more than a century today.

Jefferson Letter 443; see also Eldred, supra, at 246–252 (opinion of Breyer, J.).

The Constitution grants Congress primary responsibility for assessing comparative costs and benefts and drawing copyright's statutory lines. Courts must respect those lines and not grant copyright protection where Congress has de- cided not to do so. And it is clear that Congress has not

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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 protec- tion 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) (observing that at the time

of the 1976 Copyright Act, Congress had rejected every one of the approximately 70 design protection bills that had been

“To Amend title 17, United States Code, to provide protec- tion for fashion design” (introduced Mar. 30, 2006; un- enacted). Congress has left “statutory . . . protection . . . largely unavailable for dress designs. ” 1 Nimmer

Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687, 1698–1705 (2006).

Congress' decision not to grant full copyright protection to the fashion industry has not left the industry without pro- tection. Patent design protection is available. 35 U. S. C. §§ 171, 173. A maker of clothing can obtain trademark pro- tection under the Lanham Act for signature features of the clothing. 15 U. S. C. § 1051 et seq. And a designer who cre- ates an original textile design can receive copyright protec- tion for that pattern as placed, for example, 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 Congress refused to provide. It would risk increased prices and unforesee-

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able 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 Committee, The New Econ-

omy 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 creating 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 415.

If we ask the “separateness” question correctly, the an- swer here is not diffcult to fnd. The majority's opinion, in its appendix, depicts the cheerleader dress designs that Var- sity submitted to the Copyright Offce. Can the design fea- tures in Varsity's pictures exist separately from the utilitar- ian aspects of a dress? Can we extract those features as copyrightable design works standing alone, without bringing along, via picture or design, the dresses of which they consti- tute a part?

Consider designs 074, 078, and 0815. They certainly look like cheerleader uniforms. That is to say, they look like pic- tures of cheerleader uniforms, just like Van Gogh's old shoes look like shoes. I do not see how one could see them other- wise. Designs 299A and 299B present slightly closer ques- tions. 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 fve of Varsity's pictures, 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.

448 STAR ATHLETICA, L. L. C. v. VARSITY BRANDS, INC.

Breyer, J., dissenting

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 417, that painting would be of a cheerleader's dress. The es- thetic 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 sepa- rate, 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 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 Respondents 50. The major- ity imagines that Varsity submitted something different— that is, only the surface decorations 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 like rectangular space depicting chevrons and stripes, 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 sur- face decorations whose “treatment and arrangement” are co- extensive 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

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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 copy- right 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 picture.

Ante, at 415. That is to say, one cannot obtain a copyright that would give its holder “any rights in the useful article that inspired it.” Ibid.

With respect, I dissent.

[Appendix to opinion of Breyer, J., follows this page.]