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363

EDERAL

TATUTES

AND

EGULATIONS

1976

— Useful Articles — Star Athletica, L.L.C. v.

Varsity Brands, Inc.

Since 1870, copyright protection has been available for “works of the

fine arts.”

Through the Copyright Act of 1976

(the Act), Congress

expanded the scope of copyright to include

aesthetic features of useful

objects.

The design of a so-called “useful article”

may be copyrighted

only if the object’s useful and aesthetic features are separable.

Since

the statute was enacted, between eight

and ten

approaches for defining

separability proliferated amongst scholars and lower courts, resulting in

“inconsistent holdings.”

Last Term, in Star Athletica, L.L.C. v. Varsity

Brands, Inc.,

the Supreme Court clarified the separability test and held

that the designs on a cheerleading uniform were separable from the uni-

form’s function as clothing and were copyrightable under the Act.

While a much-needed clarification of this area of law, the opinion may

not eliminate lower courts’ variations in separability analysis because it

contradicts itself regarding the inherent separability of surface designs,

does little more than restate the statute, and flinches from delving into

the visual nature of the question.

Star Athletica (Star) and Varsity Brands (Varsity) were in the busi-

ness of marketing and selling uniforms and gear for athletic teams, in-

cluding cheerleading squads.

Varsity held copyright registrations for

three of its cheerleading uniform designs as “2-dimensional artwork”

and for two as “fabric design (artwork).”

When designing a uniform,

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Mazer v. Stein, 347 U.S. 201, 209 (1954) (quoting Act of July 8, 1870, ch. 230, § 86, 16 Stat.

198, 212 (current version at 17 U.S.C. § 102 (2012))).

sections of the U.S. Code).

See 17 U.S.C. § 101.

“A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to

portray the appearance of the article or to convey information.” Id. Examples of useful articles

include furniture, children’s toys, belt buckles, and lamps. See Barton R. Keyes, Note, Alive and

Well: The (Still) Ongoing Debate Surrounding Conceptual Separability in American Copyright Law,

69 O

HIO

. L.J. 109, 111, 114 (2008).

See 17 U.S.C. § 101.

See Sonja Wolf Sahlsten, Note, I’m a Little Treepot: Conceptual Separability and Affording

. L. R

. 941, 944 (2015).

Varsity Brands, Inc. v. Star Athletica, LLC, 799 F. 3d 468, 484–85, 487 (6th Cir. 2015).

Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37

OPYRIGHT

’

U.S.A. 339, 340 (1990).

137 S. Ct. 1002 (2017).

Id. at 1016.

Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *1 (W.D. Tenn.

Mar. 1, 2014).

Id. at *2.

364 HARVARD LAW REVIEW [Vol. 131:363

Varsity’s employees usually drew two-dimensional images combining

design elements.

Customers chose among the “design concept[s]” in

Varsity’s catalog and could select specific “shape[s], colors, and braiding

for the uniform[s].”

After Star published a catalog of cheerleading

uniforms with designs similar to Varsity’s copyrighted designs, Varsity

sued, alleging infringement of their exclusive rights to reproduce, dis-

play, and distribute their copyrighted designs.

After discovery, both parties moved for summary judgment.

issue was whether Varsity owned a valid copyright in the designs of

the cheerleading uniforms and, in particular, whether the designs were

copyrightable subject matter.

Since the uniforms, as clothing, “pos-

sess[] both utilitarian and aesthetic value,” they were useful articles.

Consequently, their useful features — their “shape, style, cut, and di-

mensions” — could not be copyrighted.

But, the design on the cloth-

ing’s fabric may receive copyright protection as a “pictorial, graphic, or

sculptural [(PGS)] work only if, and only to the extent that,” the PGS

and utilitarian aspects are separable.

Separability has two elements:

separate identification and independent existence.

Judge Cleland rea-

soned that the former “implies conceptual severability” and the latter

“physical separability.”

He considered the relationship between the

garments’ utilitarian function and aesthetic features: because the uni-

forms were no longer useful for “cloth[ing] the body in a way that evokes

the concept of cheerleading” without the chevrons, lines, and colored

panels, the features were not conceptually separable.

He also held that

the designs were not physically separable, because taking them off of

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Id. at *1–2. Design features included “[]chevrons[], lines, curves, stripes, angles, [and] diago-

nals.” Varsity Brands, Inc. v. Star Athletica, LLC, 799 F. 3d 468, 471 (6th Cir. 2015). For images of

the designs, see id. at 472–74.

Varsity Brands, 799 F. 3d at 471.

Varsity Brands, 2014 WL 819422, at *2; see 17 U.S.C. § 106 (2012) (enumerating exclusive

rights under the Act). Varsity also alleged trademark infringement under a provision of the Lanham

Act, 15 U.S.C. § 1125(a) (2012), and claims under state law. Varsity Brands, 2014 WL 819422, at

*9; see also Varsity Brands, Inc., 799 F. 3d at 475 n.3. Varsity did not oppose Star’s motion for

summary judgment with regard to its Lanham Act claims and did not appeal the district court’s

dismissal of those claims. Id.

See Varsity Brands, 2014 WL 819422, at *1.

See id. at *3; see also 17 U.S.C. §§ 101, 102(a)(5). To show copyright infringement, a plaintiff

must establish “(1) ownership of a valid copyright, and (2) copying” of copyrightable material. Var -

sity Brands, 2014 WL 819422, at *3 (quoting Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.

340, 361 (1991)). Judge Cleland rejected Varsity’s argument that its copyright registration entitled

the copyright to a presumption of validity, because the Copyright Office mechanically issues regis-

trations. Id. at *3 n.2.

Varsity Brands, 2014 WL 819422, at *3; see 17 U.S.C. § 101 (defining “useful article”).

Varsity Brands, 2014 WL 819422, at *3.

17 U.S.C. § 101.

See id.

Varsity Brands, 2014 WL 819422, at *7.

Id. at *8.

2017] THE SUPREME COURT — LEADING CASES 365

the fabric did “not remove their association as cheerleading uniforms.”

As a result, the designs were not copyrightable, and Star’s motion on

the copyright infringement claims was granted.

The Sixth Circuit reversed and remanded.

Writing for the major-

ity, Judge Moore

first held that the Sixth Circuit would defer to the

shown by a valid copyright registration.

Deference was due given the

Office’s expertise and experience with useful article analyses, the train-

ing given to its employees in applying the statute, and the “sound legal

reasoning” of its interpretation; thus, the district court had erred in not

deferring to the Copyright Office’s determination.

Judge Moore then moved on to the separability analysis. She re-

viewed the myriad approaches to separability followed by other circuits

and proposed by scholars but declined to follow any one approach.

She then laid out a new method of separability analysis for the Sixth

Circuit.

A court must first determine that the design in question is

PGS; second, confirm that the object is a useful article; and third, pin

down the article’s permissible “utilitarian aspects” under the Act.

court must ensure fourth, that the utilitarian and PGS features are sep-

arately identifiable and fifth, that the utilitarian and PGS aspects can

exist independently of one another.

The final inquiry is guided by the

“objectively necessary” and “design-process” approaches adopted by

other courts.

Under the objectively necessary approach, if an article’s

utilitarian features function without the PGS design, the design can exist

independently.

To inform this determination, courts can use the

design-process approach, which considers evidence from the designer

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Id. at *9.

Id. Since Varsity’s Lanham Act claims were also dismissed, no federal claims remained, and

Judge Cleland dismissed the state law claims. Id.

Varsity Brands, Inc. v. Star Athletica, LLC, 799 F. 3d 468, 471 (6th Cir. 2015).

Judge Moore was joined by Judge Guy.

Varsity Brands, 799 F. 3d at 479–80 (citing United States v. Mead Corp., 533 U.S. 218, 226–27

(2001); Skidmore v. Swift & Co., 323 U.S. 134 (1944)).

Id. at 480.

See id. at 484–85, 487 (collecting tests). The court paid special attention to cases analyzing

clothing. See id. at 485–87 (discussing Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324

(2d Cir. 2005), id. at 485–86, and Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d

542 (S.D.N.Y. 2011), aff’d sub nom. Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App’x 42 (2d

Cir. 2012), id. at 486).

Id. at 487–89.

Id. at 487 (citing 17 U.S.C. § 101 (2012)).

See id. at 488.

Id. (citing Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F. 3d 913, 931–32 (7th Cir. 2004);

Carol Barnhart Inc. v. Econ. Cover Corp., 773 F. 2d 411, 419 (2d Cir. 1985)).

Id. (citing Carol Barnhart, 773 F.2d at 419).

366 HARVARD LAW REVIEW [Vol. 131:363

about “which components of the design are essential to the functionality

of the useful article.”

Under this test, the uniform designs were copyrightable subject mat-

ter.

The stripes and chevrons were PGS and designs of useful articles,

uniforms, which have the utilitarian functions of athletic wear.

They

could be separately identified, since the uniform’s useful features were

not affected by the absence of stripes and chevrons and the design and

the clothing could appear “side by side.”

Finally, the independent ex-

istence requirement was met, in part because the designs could and did

appear in other media, namely other types of clothing.

Judge McKeague dissented.

He diverged from the majority on the

third step, the useful functions that the court could permissibly con-

sider.

Pointing out that the majority’s analysis depends on the level of

generality at which a “function” is articulated, he would have defined it

more narrowly

: “to clothe the body ‘in an attractive way for a special

occasion.’”

Since the uniforms’ design rendered them more useful for

that purpose, Judge McKeague believed that the utilitarian and aes-

thetic features were not separable.

The Supreme Court affirmed.

Writing for the Court, Justice

Thomas

clarified the separability analysis, sweeping away the lower

courts’ tests.

The Court held that to receive copyright protection as a

PGS work, an aesthetic feature of a useful article must be perceivable

as a work separate from the useful article and be protectable as a PGS

work “on its own or . . . in [another] tangible medium” if “imagined

apart.”

The first inquiry is simple, corresponding to the separately

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Id. (citing Pivot Point Int’l, 372 F. 3d at 931–32).

Id. at 492.

Id. at 489–90. Judge Moore rejected Star’s argument that the uniform “identif[ies] the wearer

as a cheerleader” because the statute prevents courts from considering the conveying of information

as a utilitarian function. Id. at 490; see also 17 U.S.C. § 101 (2012).

Varsity Brands, 799 F. 3d at 491 (quoting U.S. C

OPYRIGHT

FFICE

, C

OMPENDIUM

U.S.

OPYRIGHT

FFICE

RACTICES

§ 924.2(B) (3d ed. 2014)).

Id. at 491–92. Since the decision restored a federal claim, the district court’s order dismissing

Varsity’s state law claims was vacated. Id. at 494.

Id. at 494 (McKeague, J., dissenting).

See id. at 495.

Id.

Id. (quoting Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App’x 42, 44 (2d Cir. 2012)).

Id. at 496.

Star Athletica, 137 S. Ct. at 1007.

Justice Thomas was joined by Chief Justice Roberts and Justices Alito, Sotomayor, and

Kagan.

See Star Athletica, 137 S. Ct. at 1010–16. As a threshold question, separability analysis was

warranted because the statute provided that a “design of a useful article” can include “two-

dimensional” features. Id. at 1009 (quoting 17 U.S.C. § 101 (2012)).

Id. at 1012. The Court stressed that copyright protection is not available when imagining the

aesthetic features separately from the useful features “creat[es] a replica of [an] article in some other

medium.” Id. at 1010.

2017] THE SUPREME COURT — LEADING CASES 367

identifiable prong; the second, corresponding to the independent exis-

tence prong, is “more difficult to satisfy.”

The Court’s solution was

supported by the plain text of section 101 and the Act as a whole, since

sections 101, 106, and 113(a) provide that a PGS design receives copy-

right protection, no matter if it is fixed first as part of a useful article or

as a stand-alone work.

Additionally, the approach was consistent with

the history of the statute, because it did not overrule Mazer v. Stein,

the opinion that informed the statute’s text.

There, the Court held

that a lamp base in the shape of a human dancer was copyrightable

subject matter under the 1909 copyright regime.

The Copyright Office

implemented this holding through its regulations, and Congress lifted

the language from those regulations in enacting the 1976 Act.

Since,

in Mazer, the lamp’s usefulness without the statuette did not factor into

the analysis, whether an article was functional without the design had

no bearing on its copy-rightability in Star Athletica either.

The uniforms passed this test. Since the chevrons and lines were

perceivable, the first prong was satisfied.

The second prong was met

because the chevrons and lines, “applied in another medium,” would be

two-dimensional works of art that “would not replicate the uniform it-

self.”

The Court disposed of counterarguments and alternative tests

raised by the parties as not grounded in the text of the statute.

Addi-

tionally, any reliance on the distinction between physical and conceptual

separability was misplaced, because the “text indicates” the exercise is

conceptual.

Finally, the Court concluded that its decision was not

contrary to Congress’s intent to preclude copyright protection for cloth-

ing, because Varsity’s copyright was in only the uniform’s decorations,

and not its “shape, cut, and physical dimensions.”

Justice Ginsburg concurred in the judgment.

Since Varsity’s copy-

right registrations were not in the uniform, but in a fabric design repro-

duced on a uniform, she argued the copyright was not in a design of a

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Id. at 1010.

Id. at 1011–12; see also 17 U.S.C. §§ 101, 106, 113(a).

347 U.S. 201 (1954).

See Star Athletica, 137 S. Ct. at 1011–12.

Mazer, 347 U.S. at 214.

Star Athletica, 137 S. Ct. at 1011–12.

Id. at 1013–14.

Id. at 1012.

Id.

See id. at 1013–15 (rejecting proposed tests that required the useful article to be “equally” or

“similarly useful” once the design is removed, id. at 1013–14, that considered the artist’s design

process, id. at 1015, or that accounted for the article’s marketability without the design, id.).

Id. at 1014.

Id. at 1015–16.

Id. at 1018 (Ginsburg, J., concurring in the judgment).

368 HARVARD LAW REVIEW [Vol. 131:363

useful article.

Thus, separability analysis was not necessary, and the

designs were properly copyrighted.

Justice Breyer dissented.

Ac-

cepting the majority’s test, Justice Breyer disagreed with their framing

and would have held that the designs could not be perceived sepa-

rately.

For Justice Breyer, the majority’s articulation suffered from

vagueness: “virtually any industrial design” could satisfy the majority’s

test and “be imagined as a ‘two- or three-dimensional work of art.’”

Justice Breyer turned to illustrations and examples to answer whether

“the design picture[s] the useful article.”

Applying the uniforms’ de-

signs to, for example, a canvas creates a painting of a uniform; the de-

signs “replicate the cut and style of the uniforms.”

Thus, for the dis-

senters, they are not separable, and not protectable by copyright.

Scholars and courts have proposed and applied many approaches for

answering the separability question, resulting in different tests in differ-

ent circuits and for different articles.

Star Athletica provides much

needed focus by eliminating the competing tests and the judicial discre-

tion and subjectivity they invited. However, the opinion replaced that

confusion with confusion of its own. It explicitly denied that it expanded

the reach of copyright law to surface decorations that met the other stat-

utory requirements, but the opinion seems to do just that. Additionally,

it lacks cues to guide lower courts in their analyses: it relied too heavily

on plain text in an area begging for descriptive language and eschewed

analogy in favor of reducing judicial discretion. Consequently, Star Ath-

letica may not provide the clarity that the courts or industry need.

Since the enactment of the Act in 1976, courts and scholars have

deployed many approaches to interpret separability’s separately identi-

fiable and “capable of independent existence” elements.

These ap-

proaches considered factors as disparate as how likely it is that “some

significant segment of the community” would buy the PGS feature di-

vorced from its useful purpose,

how useful the object remains once

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Id.

See id. Unlike the majority, see id. at 1009, Justice Ginsburg believed Varsity had argued

this in its briefs. Id. at 1019 n.4 (Ginsburg, J., concurring in the judgment).

Id. at 1030 (Breyer, J., dissenting). Justice Breyer was joined by Justice Kennedy.

Id. at 1030–31.

Id. at 1033 (quoting id. at 1007, 1016 (majority opinion)). Justice Breyer also noted the deci-

sion would expand the reach of copyright law, in the fashion industry in particular, and argued it

was the role of Congress, not the Court, to alter the law to such a degree. See id. at 1034–35.

Id. at 1033; see id. at 1031–33.

Id. at 1035.

See Varsity Brands, Inc. v. Star Athletica, LLC, 799 F. 3d 468, 484–85 (6th Cir. 2015); Alfred

C. Yen, Copyright Opinions and Aesthetic Theory, 71 S.

. L. R

. 247, 277–82 (1998).

17 U.S.C. § 101 (2012); see Varsity Brands, 799 F. 3d at 484–85; Varsity Brands, Inc. v. Star

Athletica, LLC, No. 10-2508, 2014 WL 819422, at *3–4 (W.D. Tenn. Mar. 1, 2014).

Galiano v. Harrah’s Operating Co., 416 F. 3d 411, 419 (5th Cir. 2005) (quoting 1 M

ELVILLE

B. N

IMMER

& D

AVI D

IMMER

, N

IMMER

OPYRIGHT

§ 2.08[B][3] (2005)).

2017] THE SUPREME COURT — LEADING CASES 369

separated from the PGS features,

and how much the designer took

functional and aesthetic considerations into account.

The tests have

been criticized for allowing judges’ artistic judgment to enter into the

analysis,

contrary to the Court’s long-standing admonition that judges

are not art critics,

and for looking for features or qualities, like mar-

ketability or the artist’s methods, that “reflect . . . a merger” between the

aesthetic and useful features, “rather than looking for the merger itself”

by determining whether it is in fact possible to imagine the design with-

out the function, and vice versa.

Star Athletica knocks out these ap-

proaches and makes the landscape more predictable for parties, who

need not guess which of eight to ten tests a court will follow.

The Court’s test improves on prior approaches by avoiding inquiry

into the article’s function and minimizing opportunity for judicial dis-

cretion. First, Justice Thomas resolved the flaw Judge McKeague iden-

tified in the Sixth Circuit’s approach, that the copyrightability of the

PGS feature would depend on how specifically the article’s utility is

defined.

There, the outcome turned on the fact that the uniform’s

purpose was to cover the body rather than to cover the body for cheer-

leading.

By focusing on the design, rather than the article,

the Court

sidestepped the difficulties the Sixth Circuit encountered in determining

how much more or less useful the chevrons made the uniforms and min-

imized semantic and philosophic disagreements.

Second, the Court’s analysis eliminates subjective aspects of the

other separability tests. For example, the primary-subsidiary approach

allowed judges to find separability when, in their artistic judgment, the

aesthetic feature was primary.

Thus, the court in Kieselstein-Cord v.

Accessories by Pearl, Inc.

believed that the functionality of the belt

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

See Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F. 3d 913, 934 (7th Cir. 2004) (Kanne,

J., dissenting).

Id. at 930–31 (majority opinion); Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d

1142, 1145 (2d Cir. 1987).

See, e.g., Keyes, supra note 4, at 135; Sahlsten, supra note 6, at 954 n.88, 959, 964 (criticizing

the primary-subsidiary, temporal displacement, and equally-useful tests).

See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251–52 (1903).

Darren Hudson Hick, Conceptual Problems of Conceptual Separability and the Non-

Usefulness of the Useful Articles Distinction, 57 J.

OPYRIGHT

’

U.S.A. 37, 49 (2009).

See Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 496 (6th Cir. 2015) (McKeague,

J., dissenting).

Id.

See Star Athletica, 137 S. Ct. at 1012–13. However, it is worth noting that the statute’s

separate identification and independent existence elements are not stand-alone but relative: the PGS

feature must be “identified separately from” and “capable of existing independently of” the useful

features. 17 U.S.C. § 101 (2012) (emphasis added). This language counsels against completely dis-

regarding the article’s utilitarian aspects in the separability analysis.

See Star Athletica, 137 S. Ct. at 1012–13; Varsity Brands, 799 F. 3d at 491.

See Sahlsten, supra note 6, at 954 n.88.

632 F. 2d 989 (2d Cir. 1980).

370 HARVARD LAW REVIEW [Vol. 131:363

buckles was subsidiary to their nature as body ornamentation and found

separability.

Similarly, the design-process approach permitted the sub-

jective intent of the artist, and the judge’s understanding of it, to control

the analysis.

Therefore, in Brandir International, Inc. v. Cascade

Pacific Lumber Co.,

the artist’s decision to adapt his sculpture into a

more useful and functional bike rack sank the claim for separability.

Overall, Star Athletica reduces opportunity for judicial discretion and

could yield more predictable outcomes.

Nonetheless, this opinion may not eliminate variations in the appli-

cation of separability analysis. First, the Court functionally expanded

tice Thomas rejected Varsity’s argument that surface designs are “inher-

ently separable” as designs on a useful article, rather than designs of a

useful article.

However, the Court noted that other clothing bearing

the design and a painting of the design would not “replicate” the uni-

form.

Thus, the Court set a high bar for what would create a replica

of an article and established a framework that ensures surface decora-

tions will nearly always be separable. These dicta imply that the inde-

pendently existing work can have the shape and look of the article,

evoke the same concepts,

and even perform the same function and still

be separable.

And, the Court mentioned only one example that would

fail this prong: a car, imagined as a three-dimensional cardboard model,

would not receive copyright protection.

This example does not explain

when a useful article’s surface decoration will not be copyrightable, as

it pertains to a three-dimensional object. The tension in this apparent

contradiction could lead to inconsistent applications of Star Athletica.

Additionally, the Court may have invited various interpretations of

the opinion by not providing more guidance on how the text of § 101

should be construed. The Court’s test does little more than restate the

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

Id. at 993–94.

See Hick, supra note 77, at 44–45. Reliance on testimony from designers could also encourage

strategic behavior by sophisticated litigants designing objects to obtain copyright protection.

834 F. 2d 1142 (2d Cir. 1987).

Id. at 1147–48.

Star Athletica, 137 S. Ct. at 1009 (quoting Brief for Respondents at 26, Star Athletica, 137 S.

Ct. 1002 (No. 15-866)).

Id. at 1012.

See id. at 1035–36 (Breyer, J., dissenting).

See Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *9 (W.D.

Tenn. Mar. 1, 2014).

See Star Athletica, 137 S. Ct. at 1012.

Id. at 1010. The model would not be copyrightable because it would replicate the car and so

would not be “capable of existing independently” as a PGS work. Id. (quoting 17 U.S.C. § 101

(2012)).

2017] THE SUPREME COURT — LEADING CASES 371

statute’s language. “[F]eatures that can be identified separately”

be-

comes “feature[s] [that] can be perceived as a . . . separate” work.

“[F]eatures that . . . are capable of existing independently”

becomes

“feature[s] . . . [that] would qualify as a protectable . . . work.”

Para-

phrases are ordinarily helpful, as they provide other ways of thinking

through a question. But the number of approaches developed by lower

courts renders it “obvious” that there was no settled way to understand

the statute’s text, how it should be applied, or under what standard.

A gloss on the text will likely not resolve those questions.

Indeed, the

district court knew that the difficulty was not in the text, but in deter-

mining the “proper standard to apply.”

100

The Sixth Circuit created an

“approach” to the separability analysis, laying out “a series of ques-

tions . . . grounded in the text of the Copyright Act.”

101

It believed it

would be most helpful to instruct courts on the precise questions. The

Court does not offer such an approach.

The Court’s sparse use of analogies and description may also make

application of the test more difficult. The majority considered only the

text: the holding was grounded in the provision, the statute as a whole,

and the history of the provision’s enactment.

102

It relied on dictionaries

rather than images.

103

The application of the test was cursory, with only

one paragraph explaining that the statute’s requirements were satisfied,

followed by two analogies.

104

In contrast, Justice Breyer’s dissent con-

templated multiple scenarios to illustrate how his framing could be de-

ployed across multiple fact patterns.

105

Additionally, both lower courts

here evaluated the facts and reasoning of other courts,

106

and courts and

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

17 U.S.C. § 101.

Star Athletica, 137 S. Ct. at 1007.

17 U.S.C. § 101.

Star Athletica, 137 S. Ct. at 1007.

Varsity Brands, Inc. v. Star Athletica, LLC, No. 10–2508, 2014 WL 819422, at *6 (W.D. Tenn.

Mar. 1, 2014); see also Varsity Brands, Inc. v. Star Athletica, LLC, 799 F. 3d 468, 487 (6th Cir. 2015).

By way of example, appellate courts in both Varsity Brands and Pivot Point International,

Inc. v. Charlene Products, Inc., 372 F. 3d 913 (7th Cir. 2004), began their analysis with the text of

section 101. Varsity Brands, 799 F. 3d at 487; Pivot Point Int’l, 372 F. 3d at 920–21.

100

Varsity Brands, 2014 WL 819422, at *6; see also Keyes, supra note 4, at 115 (“The Copyright

Act does not give courts much guidance in determining whether a work meets the separability

requirement.”).

101

Varsity Brands, 799 F. 3d at 487.

102

See Star Athletica, 137 S. Ct. at 1010–12.

103

See id. at 1014.

104

See id. at 1012. The Court’s counterexample, of the cardboard model car, id. at 1010, is of

dubious usefulness, because it is not clear for what PGS feature copyright protection is sought.

105

See id. at 1031–33 (Breyer, J., dissenting).

106

See Varsity Brands, 799 F. 3d at 485–87; Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-

2508, 2014 WL 819422, at *4–6 (W.D. Tenn. Mar. 1, 2014).

372 HARVARD LAW REVIEW [Vol. 131:363

scholars usually discuss examples in detail.

107

Of course, the Supreme

Court need not parse lower court decisions or defend its consistency with

them.

108

Nonetheless, the Court could have recognized, from these

many examples, that visual analyses and illustrative analogies to like

and unlike objects are helpful in copyright law in general and separa-

bility analysis in particular, and adjusted its approach accordingly.

Because useful articles are three-dimensional objects, and because, as

Star Athletica illustrates, aesthetic and useful features can be difficult

to distinguish, description of how a test would be applied across situa-

tions is an important feature of separability analysis. Had the Court

discussed the visuals, it could have ensured a more predictable separa-

bility inquiry.

The Court’s decision not to engage in descriptive analysis may be an

attempt to ensure that judges’ aesthetic preferences do not bleed into

the separability test. This concern, which forms the basis of many cri-

tiques in this area, is valid given the principle of aesthetic neutrality,

which is founded in the courts’ lack of expertise

109

and fears of judicial

paternalism regarding what qualifies as art.

110

Any separability ap-

proach must balance the need for aesthetic neutrality with the need for

an implementable standard. But here, aesthetic neutrality and textualist

analysis are privileged at the expense of clarity. Even though the test

minimizes judicial discretion, the Court turned a blind eye to the chal-

lenges facing lower courts.

The reasoning in Star Athletica is sound and reduces opportunities

for courts to consider subjective factors. But the Court’s articulation of

its ruling lacks clarity and detail and could create its own confusion. In

announcing the separability test, the opinion did little more than para-

phrase the statute, overlooking the lower courts’ various ways of imple-

menting that language. Additional means of approaching the text,

through analogy and description, were not put forward to clarify the

statute’s meaning. And, contradictions between the different parts of

the Court’s analysis complicate the final holding. Even here, the ma-

jority and dissent fundamentally agreed on the meaning of the statute’s

text, but preferred different ways of framing the question the statute

asked and came to two different conclusions as to the result. With all

this considered, lower courts may formulate their own glosses and ap-

proaches to Star Athletica’s separability analysis, resulting in as much

unpredictability in the landscape as preceded this opinion.

–––––––––––––––––––––––––––––––––––––––––––––––––––––––––––––

107

See, e.g., Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F. 3d 913, 926–30 (7th Cir. 2004);

Matthew C. Broaddus, Comment, Designers Should Strive to Create “Useless” Products: Using the

“Useful Article” Doctrine to Avoid Separability Analysis, 51 S.

. L. R

. 493, 496–97 (2009).

108

Cf. Blanchard v. Bergeron, 489 U.S. 87, 97 (1989) (Scalia, J., concurring in part and concurring

in the judgment) (calling the majority’s “careful[] examin[ation]” of a Fifth Circuit opinion and three

district court opinions a “role reversal”).

109

See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251–52 (1903).

110

See Yen, supra note 70, at 248–49.