U.S. Supreme Court Cites RPL Attorney Mark McKenna’s Work in Copyright Case

The Supreme Court creates a new test for determining whether a feature incorporated into a useful article is eligible for copyright protection

Date iconMarch 22, 2017

When not lending his talents to RPL, advising clients across a wide range of IP subject matter, Mark McKenna is a full-time professor and associate dean at the Notre Dame Law School. Mark is widely recognized as a leading trademark scholar, while also writing about design patents, copyrights, the right of publicity, and the intersection of intellectual property rights regimes.

In the recent U.S. Supreme Court case Star Athletica v. Varsity Brands, a case addressing whether artistic features on clothing deserve copyright protection, Justice Stephen Breyer cited two of Mark’s articles in his dissenting opinion.

Varsity Brands, Inc. sells cheerleading uniforms. They 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 Star Athletica, LLC, who also markets cheerleading uniforms, for copyright infringement.

On March 22, 2017, the Supreme Court, in a 6-2 decision, affirmed the Sixth Circuit holding that Varsity Brands’ two-dimensional graphic designs are entitled to copyright protection as “pictorial, graphic, and sculptural works” under the copyright law for useful articles in certain circumstances. In its opinion, the Supreme Court set forth a new two-prong test: 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 fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.

Justice Breyer dissented, joined by Justice Kennedy. In the dissent, Breyer cited a friend-of-the-court brief that Mark drafted with three other law professors – Mark Lemley of Stanford University, Christopher Jon Sprigman of New York University, and Rebecca Tushnet of Georgetown University. The brief argued against copyright protection for the design features in this case and for limiting copyright protection to “applied art.” Mark’s example of applied art is a flower carved into the back of a chair. The flower would be recognized as a flower whether it was on a chair, on a poster, or on a piece of clothing, as it is an artistic image applied to the product. Applied art has always been protected under copyright law. Mark’s argument against copyright protection in this case essentially boils down to the argument that if you pulled the geometric designs off the cheerleader uniforms in this case, they would be nothing more than abstract lines.

Breyer also cited Mark’s academic article titled “Progress and Competition in Design” published in 2013 in the Stanford Technology Law Review and written with Katherine J. Strandburg of New York University.

Although Mark’s brief argued against it, the Court’s decision will likely lead to an expansion of the number of copyright registrations claims in the fashion and apparel industries.