Justice Ginsburg concurred with the majority, but would have found the designs to be copyrightable pictorial or graphics works that happened to be reproduced on useful articles - negating the need to parse the language of 17 U.S.C. § 101. And that can be copyrighted. The district court found that the designs were not protectable because they could not be separated from the utilitarian goal of identifying the garments as cheerleading uniforms.
This case involved lines, chevrons, and colorful shapes on cheerleader uniforms. The Court devoted slightly more - but still quite little - ink to the requirement that a design be "capable of existing independently", concluding that a design feature must be able to exist as its own pictorial, graphic, or sculptural work "once it is imagined apart from the useful article".
"First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities", Thomas wrote.
In walking through this, the court held that two-dimensional surface decorations will not always be separable, but the "artwork" applied to the cheerleader uniforms at issue here did pass the test. The design is inseparable from the utility, in other words.
The 6-2 ruling is a victory for Varsity Brands LLC, the world's largest cheerleading-uniform company.
Susan Scafidi, a professor at Fordham University and founder of the Fashion Law Institute, provided expert advice in the trial when the case was still at the District Court level and says this should not have been an "enormous, Supreme Court-worthy case garnering global attention". The ruling supports the pre-established law that protects such works of art. Third, the Court disagreed with the petitioner that Congress' refusal to include a statutory provision permitting limited protection of industrial designs had any relevance or persuasive value. In his second dissent in a patent case this week Breyer, joined by Justice Anthony Kennedy, said he couldn't get past the fact Varsity registered pictures of uniforms, not the designs on them.