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

Justice Ginsburg, concurring in the judgment.

I concur in the Court’s judgment but not in its opinion. Unlike the majority, I would not take up in this case the separability test appropriate under 17 U. S. C. §101.[1] Consideration of that test is unwarranted because the designs at issue are not designs of useful articles. Instead, the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.[2]

A pictorial, graphic, or sculptural work (PGS work) is copyrightable. §102(a)(5). PGS works include "two-dimensional and three-dimensional works of fine, graphic, and applied art." §101. Key to this case, a copyright in a standalone PGS work "includes the right to reproduce the work in or on any kind of article, whether useful or otherwise." §113(a). Because the owner of a copyright in a pre-existing PGS work may exclude a would-be infringer from reproducing that work on a useful article, there is no need to engage in any separability inquiry to resolve the instant petition.

The designs here in controversy are standalone pictorial and graphic works that respondents Varsity Brands, Inc., et al. (Varsity) reproduce on cheerleading uniforms. Varsity’s designs first appeared as pictorial and graphic works that Varsity’s design team sketched on paper. App. 281. Varsity then sought copyright protection for those two-dimensional designs, not for cheerleading costumes; its registration statements claimed "2-Dimensional artwork" and "fabric design (artwork)." Appendix, infra, at 4–7, 9–10, 12–14. Varsity next reproduced its two-dimensional graphic designs on cheerleading uniforms, also on other garments, including T-shirts and jackets. See, e.g., App. 274, 276.[3]

In short, Varsity’s designs are not themselves useful articles meet for separability determination under §101; they are standalone PGS works that may gain copyright protection as such, including the exclusive right to reproduce the designs on useful articles.[4]

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