Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC

NOTICE: This opinion is subject to
formal revision before publication in the preliminary print of the
United States Reports. Readers are requested to notify the Reporter
of Decisions, Supreme Court of the United States, Washington,
D. C. 20543, of any typographical or other formal errors, in
order that corrections may be made before the preliminary print
goes to press.

															SUPREME COURT OF THE UNITED STATES

															_________________

															No. 17–571

															_________________

															FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
PETITIONER v. WALL-STREET.COM, LLC, et al.

															on writ of certiorari to the united states
court of appeals for the eleventh circuit

															[March 4, 2019]

															Justice Ginsburg delivered the opinion of the
Court.

															Impelling prompt registration of copyright
claims, 17 U. S. C. §411(a) states that “no civil action
for infringement of the copyright in any United States work shall
be instituted until . . . registration of the copyright
claim has been made in accordance with this title.” The question
this case presents: Has “registration . . . been made in
accordance with [Title 17]” as soon as the claimant delivers the
required application, copies of the work, and fee to the Copyright
Office; or has “registration . . . been made” only after
the Copyright Office reviews and registers the copyright? We hold,
in accord with the United States Court of Appeals for the Eleventh
Circuit, that registration occurs, and a copyright claimant may
commence an infringement suit, when the Copyright Office registers
a copyright. Upon registration of the copyright, however, a
copyright owner can recover for infringement that occurred both
before and after registration.

															Petitioner Fourth Estate Public Benefit
Corporation (Fourth Estate) is a news organization producing online
journalism. Fourth Estate licensed journalism works to respondent
Wall-Street.com, LLC (Wall-Street), a news website. The license
agreement required Wall-Street to remove from its website all
content produced by Fourth Estate before canceling the agreement.
Wall-Street canceled, but continued to display articles produced by
Fourth Estate. Fourth Estate sued Wall-Street and its owner,
Jerrold Burden, for copyright infringement. The complaint alleged
that Fourth Estate had filed “applications to register [the]
articles [licensed to Wall-Street] with the Register of
Copyrights.” App. to Pet. for Cert. 18a.[ 1 ] Because the Register had not yet acted on Fourth
Estate’s applications,[ 2 ] the
District Court, on Wall-Street and Burden’s motion, dismissed the
complaint, and the Eleventh Circuit affirmed. 856 F.3d 1338 (2017).
Thereafter, the Register of Copyrights refused registration of the
articles Wall-Street had allegedly infringed.[ 3 ]

															We granted Fourth Estate’s petition for
certiorari to resolve a division among U. S. Courts of Appeals
on when registration occurs in accordance with §411(a). 585
U. S. ___ (2018). Compare, e.g., 856 F. 3d, at
1341 (case below) (registration has been made under §411(a) when
the Register of Copyrights registers a copyright), with, e.g., Cosmetic Ideas, Inc. v. IAC/Interactivecorp , 606 F.3d 612, 621 (CA9 2010)
(registration has been made under §411(a) when the copyright
claimant’s “complete application” for registration is received by
the Copyright Office).

															I

															Under the Copyright Act of 1976, as amended,
copyright protection attaches to “original works of
authorship”—prominent among them, literary, musical, and dramatic
works—“fixed in any tangible medium of expression.” 17
U. S. C. §102(a). An author gains “exclusive rights” in
her work immediately upon the work’s creation, including rights of
reproduction, distribution, and display. See §106; Eldred v. Ashcroft , 537 U.S.
186 , 195 (2003) (“[F]ederal copyright protection
. . . run[s] from the work’s creation.”). The Copyright
Act entitles a copyright owner to institute a civil action for
infringement of those exclusive rights. §501(b).

															Before pursuing an infringement claim in court,
how- ever, a copyright claimant generally must comply with
§411(a)’s requirement that “registration of the copyright claim has
been made.” §411(a). Therefore, although an owner’s rights exist
apart from registration, see §408(a), registration is akin to an
administrative exhaustion requirement that the owner must satisfy
before suing to enforce ownership rights, see Tr. of Oral Arg.
35.

															In limited circumstances, copyright owners may
file an infringement suit before undertaking registration. If a
copyright owner is preparing to distribute a work of a type
vulnerable to predistribution infringement—notably, a movie or
musical composition—the owner may apply for preregistration.
§408(f)(2); 37 CFR §202.16(b)(1) (2018). The Copyright Office will
“conduct a limited review” of the application and notify the
claimant “[u]pon completion of the preregistration.” §202.16(c)(7),
(c)(10). Once “preregistration . . . has been made,” the
copyright claimant may institute a suit for infringement. 17
U. S. C. §411(a). Preregistration, however, serves only
as “a preliminary step prior to a full registration.”
Preregistration of Certain Unpublished Copyright Claims, 70 Fed.
Reg. 42286 (2005). An infringement suit brought in reliance on
preregistration risks dismissal unless the copyright owner applies
for registration promptly after the preregistered work’s
publication or infringement. §408(f)(3)–(4). A copyright owner may
also sue for infringement of a live broadcast before “registration
. . . has been made,” but faces dismissal of her suit if
she fails to “make registration for the work” within three months
of its first transmission. §411(c). Even in these exceptional
scenarios, then, the copyright owner must eventually pursue
registration in order to maintain a suit for infringement.

															II

															All parties agree that, outside of statutory
exceptions not applicable here, §411(a) bars a copyright owner from
suing for infringement until “registration . . . has been
made.” Fourth Estate and Wall-Street dispute, however, whether
“registration . . . has been made” under §411(a) when a
copyright owner submits the application, materials, and fee
required for registration, or only when the Copyright Office grants
registration. Fourth Estate advances the former view—the
“application approach”—while Wall-Street urges the latter
reading—the “registration approach.” The registration approach, we
conclude, reflects the only satisfactory reading of §411(a)’s text.
We therefore reject Fourth Estate’s application approach.

															A

															Under §411(a), “registration . . .
has been made,” and a copyright owner may sue for infringement,
when the Copyright Office registers a copyright.[ 4 ] Section 411(a)’s first sentence provides
that no civil infringement action “shall be instituted until
preregistration or registration of the copyright claim has been
made.” The section’s next sentence sets out an exception to this
rule: When the required “deposit, application, and fee
. . . have been delivered to the Copyright Office in
proper form and registration has been refused,” the claimant “[may]
institute a civil action, if notice thereof . . . is
served on the Register.” Read together, §411(a)’s opening sentences
focus not on the claimant’s act of applying for registration, but
on action by the Copyright Office—namely, its registration or
refusal to register a copyright claim.

															If application alone sufficed to “ma[ke]”
registration, §411(a)’s second sentence—allowing suit upon refusal
of registration—would be superfluous. What utility would that
allowance have if a copyright claimant could sue for infringement
immediately after applying for registration without awaiting the
Register’s decision on her application? Proponents of the
application approach urge that §411(a)’s second sentence serves
merely to require a copyright claimant to serve “notice [of an
infringement suit] . . . on the Register.” See Brief for
Petitioner 29–32. This reading, however, requires the implausible
assumption that Congress gave “registration” different meanings in
consecutive, related sentences within a single statutory provision.
In §411(a)’s first sentence, “registration” would mean the
claimant’s act of filing an application, while in the section’s
second sentence, “registration” would entail the Register’s review
of an application. We resist this improbable construction. See, e.g., Mid-Con Freight Systems, Inc. v. Michigan
Pub. Serv. Comm’n , 545 U.S.
440 , 448 (2005) (declining to read “the same words” in con-
secutive sentences as “refer[ring] to something totally
different”).

															The third and final sentence of §411(a) further
persuades us that the provision requires action by the Register
before a copyright claimant may sue for infringement. The sentence
allows the Register to “become a party to the action with respect
to the issue of registrability of the copyright claim.” This
allowance would be negated, and the court conducting an
infringement suit would lack the benefit of the Register’s
assessment, if an infringement suit could be filed and resolved
before the Register acted on an application.

															Other provisions of the Copyright Act support
our reading of “registration,” as used in §411(a), to mean action
by the Register. Section 410 states that, “after examination,” if
the Register determines that “the material deposited constitutes
copyrightable subject matter” and “other legal and formal
requirements . . . [are] met, the Register shall register
the claim and issue to the applicant a certificate of
registration.” §410(a). But if the Register determines that the
deposited material “does not constitute copyrightable subject
matter or that the claim is invalid for any other reason, the
Register shall refuse registration.” §410(b). Section 410 thus
confirms that application is discrete from, and precedes,
registration. Section 410(d), furthermore, provides that if the
Copyright Office registers a claim, or if a court later determines
that a refused claim was registrable, the “effective date of [the
work’s] copyright registration is the day on which” the copyright
owner made a proper submission to the Copyright Office. There would
be no need thus to specify the “effective date of a copyright
registration” if submission of the required materials qualified as
“registration.”

															Section 408(f)’s preregistration option, too,
would have little utility if a completed application constituted
registration. Preregistration, as noted supra, at 3–4,
allows the author of a work vulnerable to predistribution
infringement to enforce her exclusive rights in court before
obtaining registration or refusal thereof. A copyright owner who
fears prepublication infringement would have no reason to apply for
preregistration, however, if she could instead simply complete an
application for registration and immediately commence an
infringement suit. Cf. TRW Inc. v. Andrews , 534 U.S.
19 , 29 (2001) (rejecting an interpretation that “would in
practical effect render [a provision] superfluous in all but the
most unusual circumstances”).

															B

															Challenging the Eleventh Circuit’s judgment,
Fourth Estate primarily contends that the Copyright Act uses “the
phrase ‘make registration’ and its passive-voice counterpart
‘registration has been made’ ” to describe submissions by the
copyright owner, rather than Copyright Office responses to those
submissions. Brief for Petitioner 21. Section 411(a)’s requirement
that “registration . . . has been made in accordance with
this title,” Fourth Estate insists, most likely refers to a
copyright owner’s compliance with the statutory specifications for
registration applications. In support, Fourth Estate points to
Copyright Act provisions that appear to use the phrase “make
registration” or one of its variants to describe what a copyright
claimant does. See id ., at 22–26 (citing 17
U. S. C. §§110, 205(c), 408(c)(3), 411(c), 412(2)).
Furthermore, Fourth Estate urges that its reading reflects the
reality that, eventually, the vast majority of applications are
granted. See Brief for Petitioner 41.

															Fourth Estate acknowledges, however, that the
Copyright Act sometimes uses “registration” to refer to activity by
the Copyright Office, not activity undertaken by a copyright
claimant. See id. , at 27–28 (citing 17 U. S. C.
§708(a)). Fourth Estate thus agrees that, to determine how the
statute uses the word “registration” in a particular prescription,
one must “look to the specific context” in which the term is used.
Brief for Petitioner 29. As explained supra, at 4–7, the
“specific context” of §411(a) permits only one sensible reading:
The phrase “registration . . . has been made” refers to
the Copyright Office’s act granting registration, not to the
copyright claimant’s request for registration.

															Fourth Estate’s contrary reading of §411(a)
stems in part from its misapprehension of the significance of
certain 1976 revisions to the Copyright Act. Before that year,
§411(a)’s precursor provided that “[n]o action or proceeding shall
be maintained for infringement of copyright in any work until the
provisions of this title with respect to the deposit of copies and
registration of such work shall have been complied with.” 17
U. S. C. §13 (1970 ed.). Fourth Estate urges that this
provision posed the very question we resolve today—namely, whether
a claimant’s application alone effects registration. The Second
Circuit addressed that question, Fourth Estate observes, in Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co. , 260 F.2d 637 (1958). Brief for Petitioner
32–34. In that case, in an opinion by Judge Learned Hand, the court
held that a copyright owner who completed an application could not
sue for infringement immediately upon the Copyright Office’s
refusal to register. Vacheron , 260 F. 3d, at 640–641.
Instead, the owner first had to obtain a registration certificate
by bringing a mandamus action against the Register. The Second
Circuit dissenter would have treated the owner’s application as
sufficient to permit commencement of an action for infringement. Id., at 645.

															Fourth Estate sees Congress’ 1976 revision of
the registration requirement as an endorsement of the Vacheron dissenter’s position. Brief for Petitioner 34–36.
We dis- agree. The changes made in 1976 instead indicate Congress’
agreement with Judge Hand that it is the Register’s action that
triggers a copyright owner’s entitlement to sue. In enacting 17
U. S. C. §411(a), Congress both reaffirmed the general
rule that registration must precede an infringement suit, and added
an exception in that provision’s second sentence to cover instances
in which registration is refused. See H. R. Rep. No. 94‒1476,
p. 157 (1976). That exception would have no work to do if, as
Fourth Estate urges, Congress intended the 1976 revisions to
clarify that a copyright claimant may sue immediately upon applying
for registration. A copyright claimant would need no statutory
authorization to sue after refusal of her application if she could
institute suit as soon as she has filed the application.

															Noteworthy, too, in years following the 1976
revisions, Congress resisted efforts to eliminate §411(a) and the
registration requirement embedded in it. In 1988, Congress removed
foreign works from §411(a)’s dominion in order to comply with the
Berne Convention for the Protection of Literary and Artistic Works’
bar on copyright formalities for such works. See §9(b)(1), 102Stat.
2859. Despite proposals to repeal §411(a)’s registration
requirement entirely, however, see S. Rep. No. 100‒352, p. 36
(1988), Congress maintained the requirement for domestic works, see
§411(a). Subsequently, in 1993, Congress considered, but declined
to adopt, a proposal to allow suit immediately upon submission of a
registration application. See H. R. Rep. No. 103–338,
p. 4 (1993). And in 2005, Congress made a preregistration
option available for works vulnerable to predistribution
infringement. See Artists’ Rights and Theft Prevention Act of 2005,
§104, 119Stat. 221. See also supra, at 3–4. Congress chose
that course in face of calls to eliminate registration in cases of
predistribution infringement. 70 Fed. Reg. 42286. Time and again,
then, Congress has maintained registration as prerequisite to suit,
and rejected proposals that would have eliminated registration or
tied it to the copyright claimant’s application instead of the
Register’s action.[ 5 ]

															Fourth Estate additionally argues that, as
“registration is not a condition of copyright protection,” 17
U. S. C. §408(a), §411(a) should not be read to bar a
copyright claimant from enforcing that protection in court once she
has submitted a proper application for registration. Brief for
Petitioner 37. But as explained supra, at 3, the Copyright
Act safeguards copyright owners, irrespective of registration, by
vesting them with exclusive rights upon creation of their works and
prohibiting infringement from that point forward. If infringement
occurs before a copyright owner applies for registration, that
owner may eventually recover damages for the past infringement, as
well as the infringer’s profits. §504. She must simply apply for
registration and receive the Copyright Office’s decision on her
application before instituting suit. Once the Register grants or
refuses registration, the copyright owner may also seek an
injunction barring the infringer from continued violation of her
exclusive rights and an order requiring the infringer to destroy
infringing materials. §§502, 503(b).

															Fourth Estate maintains, however, that if
infringement occurs while the Copyright Office is reviewing a
registration application, the registration approach will deprive
the owner of her rights during the waiting period. Brief for
Petitioner 41. See also 1 P. Goldstein, Copyright §3.15,
p. 3:154.2 (3d ed. 2018 Supp.) (finding application approach
“the better rule”); 2 M. Nimmer & D. Nimmer, Copyright
§7.16[B][3][a], [b][ii] (2018) (infringement suit is conditioned on
application, while prima facie presumption of validity depends on
certificate of registration). The Copyright Act’s explicit
carveouts from §411(a)’s general registration rule, however, show
that Congress adverted to this concern. In the preregistration
option, §408(f ), Congress provided that owners of works
especially susceptible to prepublication infringement should be
allowed to institute suit before the Register has granted or
refused registration. See §411(a). Congress made the same
determination as to live broadcasts. §411(c); see supra, at
4.[ 6 ] As to all other works,
however, §411(a)’s general rule requires owners to await action by
the Register before filing suit for infringement.

															Fourth Estate raises the specter that a
copyright owner may lose the ability to enforce her rights if the
Copyright Act’s three-year statute of limitations runs out before
the Copyright Office acts on her application for registration.
Brief for Petitioner 41. Fourth Estate’s fear is overstated, as the
average processing time for registration applications is currently
seven months, leaving ample time to sue after the Register’s
decision, even for infringement that began before submission of an
application. See U. S. Copyright Office, Registration
Processing Times (Oct. 2, 2018) (Registration Processing Times),
https://www.copyright.gov/
registration/docs/processing-times-faqs.pdf (as last visited Mar.
1, 2019).

															True, the statutory scheme has not worked as
Congress likely envisioned. Registration processing times have
increased from one or two weeks in 1956 to many months today. See
GAO, Improving Productivity in Copyright Registration 3
(GAO–AFMD–83–13 1982); Registration Processing Times. Delays in
Copyright Office processing of applications, it appears, are
attributable, in large measure, to staffing and budgetary shortages
that Congress can alleviate, but courts cannot cure. See 5 W.
Patry, Copyright §17:83 (2019). Unfortunate as the current
administrative lag may be, that factor does not allow us to revise
§411(a)’s congressionally composed text.

															*  *  *

															For the reasons stated, we conclude that
“registration . . . has been made” within the meaning of
17 U. S. C. §411(a) not when an application for
registration is filed, but when the Register has registered a
copyright after examining a properly filed application. The
judgment of the Court of Appeals for the Eleventh Circuit is
accordingly

															Affirmed. Notes 1 The Register of
Copyrights is the “director of the Copyright Office of the Library
of Congress” and is appointed by the Librarian of Congress. 17
U. S. C. §701(a). The Copyright Act delegates to the
Register “[a]ll administrative functions and duties under [Title
17].” Ibid. 2 Consideration of Fourth
Estate’s filings was initially delayed because the check Fourth
Estate sent in payment of the filing fee was rejected by Fourth
Estate’s bank as uncollectible. App. to Brief for United States as Amicus Curiae 1a. 3 The merits of the
Copyright Office’s decision refusing registration are not at issue
in this Court. 4 Section 411(a) provides,
in principal part: “[N]o civil action for infringement of the
copyright in any United States work shall be insti-tuted until
preregistration or registration of the copyright claim has been
made in accordance with this title. In any case, however, where the
deposit, application, and fee required for registration have been
delivered to the Copyright Office in proper form and registration
has been refused, the applicant is entitled to institute a civil
action for infringement if notice thereof, with a copy of the
complaint, is served on the Register of Copyrights. The Register
may, at his or her option, become a party to the action with
respect to the issue of registrability of the copyright claim
. . . .” 5 Fourth Estate asserts
that, if a copyright owner encounters a lengthy delay in the
Copyright Office, she may be forced to file a mandamus action to
compel the Register to rule on her application, the very problem
exposed in Vacheron & Constantin-Le Coultre
Watches , Inc . v. Benrus Watch Co ., 260 F.2d 637
(CA2 1958), see supra, at 8. But Congress’ answer to Vacheron , codified in §411(a)’s second sentence, was to
permit an infringement suit upon refusal of registration, not to
eliminate Copyright Office action as the trigger for an
infringement suit. 6 Further, in addition to
the Act’s provisions for preregistration suit, the Copyright Office
allows copyright claimants to seek expedited processing of a claim
for an additional $800 fee. See U. S. Copyright Office,
Special Handling: Circular No. 10, pp. 1–2 (2017). The Copyright
Office grants requests for special handling in situations
involving, inter alia , “[p]ending or prospective
litigation,” and “make[s] every attempt to examine the application
. . . within five working days.” Compendium of U. S.
Copyright Practices §623.2, 623.4 (3d ed. 2017).

Summary: The Supreme Court held that a copyright owner must wait to receive copyright registration from the Copyright Office before filing a lawsuit for copyright infringement. The Court affirmed the Eleventh Circuit Court of Appeals' dismissal of Fourth Estate's copyright infringement lawsuit against Wall-Street.com, as the copyright registration for the articles in question had not yet been approved when the lawsuit was filed.


Star Athletica, LLC v. Varsity Brands, Inc.

NOTICE: This opinion is subject to
formal revision before publication in the preliminary print of the
United States Reports. Readers are requested to notify the Reporter
of Decisions, Supreme Court of the United States, Washington,
D. C. 20543, of any typographical or other formal errors, in
order that corrections may be made before the preliminary print
goes to press.

															SUPREME COURT OF THE UNITED STATES

															_________________

															No. 15–866

															_________________

															STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY BRANDS, INC., et al.

															on writ of certiorari to the united states
court of appeals for the sixth circuit

															[March 22, 2017]

															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
between art and industrial design, however, is often difficult to
draw. This is particularly true when an industrial design
incorporates artistic elements. Congress has afforded limited
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 identified 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
disagreement over the proper test for implementing §101’s
separate-identification and independent-existence requirements. 578
U. S. ___ (2016). We hold that a feature incor-porated 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. Because that test is
satisfied in this case, we affirm.

															I

															Respondents Varsity Brands, Inc., Varsity
Spirit Corporation, and Varsity Spirit Fashions & Supplies,
Inc., design, make, and sell cheerleading uniforms. Respondents
have obtained or acquired more than 200 U. S. copyright
registrations for two-dimensional designs appearing on the surface
of their uniforms and other garments. These designs are primarily
“combinations, positionings, and arrangements of 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 infringing their copyrights in the five designs. The
District Court entered summary judgment for petitioner on
respondents’ 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 “utilitarian,”
function of identifying the garments as “cheerleading uniforms” and
therefore could not be “physically or conceptually” 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 identifiable” 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 Office Practices
§924.2(B) (3d ed. 2014) (Compendium)). And it determined that the
designs were “ ‘capable of existing independently’ ”
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, because “identifying the wearer as a cheerleader” is a
utilitarian function of a cheerleading uniform and the surface
designs were “integral to” achieving that function, the designs
were inseparable from the uniforms. Id., at 495–496.

															II

															The first element of a copyright-infringement
claim is “ownership of a valid copyright.” Feist Publications,
Inc. 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 defines
copyrightable subject matter as “original works of authorship fixed
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
defines to include “two-dimensional and three-dimensional works of
fine, 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 “ ‘fixed’ 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. (definitions of “fixed”
and “copies”).

															The Copyright Act also establishes a special
rule for copyrighting a pictorial, graphic, or sculptural work
incorporated into a “useful article,” which is defined 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
pictorial, graphical, or sculptural work only if, and only to the
extent that, such design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of
the article.” Ibid .

															Courts, the Copyright Office, and commentators
have described the analysis undertaken to determine whether a
feature can be separately identified from, and exist independently
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 protection as
separable features of the design of those cheerleading
uniforms.

															A

															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
contend 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 separability
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
combination” of “details” or “features” that “go to make up” the
useful article. 3 Oxford English Dictionary 244 (def. 7, first
listing) (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
(defining “[g]raphic” to mean “[o]f or pertaining to drawing or
painting”); 7 id., at 830 (defining “[p]ictorial” to mean
“of or pertaining to painting or drawing”). And the statute
expressly defines “[p]ictorial, graphical, and sculptural works” to
include “two-dimensional . . . works of . . .
art.” §101. The statute thus provides that the “design of a useful
article” can include two-dimensional “pictorial” and “graphic”
features, 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
respondents do not and have not advanced. As part of their
copyright registrations for the designs in this case, respondents
deposited with the Copyright Office drawings and photographs
depicting the designs incorporated onto cheerleading uniforms. App.
213–219; Appendix, infra . The Government argues that,
assuming the other statutory requirements were met, respondents
obtained a copyright in the deposited drawings and photographs and
have simply reproduced 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. ___, ___
(2014), because “[i]t is not the Court’s usual practice to
adjudicate either legal or predicate factual questions in the first
instance,” CRST Van Expedited, Inc. v. EEOC , 578
U. S. ___, ___ (2016) (slip op., at 16). We decline to depart
from our usual practice here.

															B

															We must now decide when a feature incorporated
into a useful article “can be identified separately from” and is
“capable 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
interpretation.” Mazer v. Stein , 347 U. S. 201,
214 (1954) . “The controlling principle in this case is the basic
and unexceptional rule that courts must give effect to the clear
meaning 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 quotation marks omitted). We do not, however,
limit this inquiry to the text of §101 in isolation.
“[I]nterpretation of a phrase of uncertain reach is not confined to
a single sentence when the text of the whole statute gives
instruction as to its meaning.” Maracich v. Spears ,
570 U. S. ___, ___ (2013) (slip op., at 15). 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 sculptural featur[e]” incorporated into the “design of
a useful article” is eligible for copyright protection if it (1)
“can be identified 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 to3–475.

															The independent-existence requirement is
ordinarily more difficult to satisfy. The decisionmaker must
determine that the separately identified feature has the capacity
to exist apart from the utilitarian aspects of the article. See 2
OED 88 (def. 5) (defining “[c]apable” of as “[h]aving the needful
capacity, power, or fitness for”). In other words, the feature must
be able to exist as its own pictorial, graphic, or sculptural work
as defined 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, 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. Al-though the replica 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 confirms 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 clarifies
that this right “includes 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 first fixed in some
tangible medium other than a useful article and subsequently
applied to a useful article, §101 protects art first fixed 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 articles. 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 fixed in some tangible medium other than a useful
article before being applied to a useful article.

															3

															This interpretation is also consistent with
the history of the Copyright Act. In Mazer , a case decided
under the 1909 Copyright Act, the respondents copyrighted a
statuette depicting 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 respondents 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
Copyright Office’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) (protect-ing “works
of artistic craftsmanship, in so far as theirform but not their
mechanical or utilitarian aspects are concerned”)).

															Second, the Court held that it was irrelevant to
the copyright 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 article, 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 first as part of a useful article.

															Shortly thereafter, the Copyright Office enacted
a regulation implementing the holdings of Mazer . See 1
Nimmer §2A.08[B][1][b] (2016). As amended, the regulation
introduced the modern separability test to copyright law:

															“If the sole intrinsic function of an
article is its utility, the fact that the article is unique and
attractively shaped 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 identified 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 protection 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 interprets §§101 and 113 in a way that would afford copyright
protection to the statuette in Mazer regardless of whether
it was first created as a standalone sculptural work or as the base
of the lamp. See 347 U. S., at 218–219.

															C

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

															Applying this test to the surface decorations on
the cheerleading 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 cheerleading 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 replicating the uniform. See App. 273–279. The
decorations are therefore separable from the uniforms and eligible
for copyright protection.[ 1 ]

															The dissent argues that the designs are not
separable because imaginatively removing them from the uniforms and
placing them in some other medium of expression—a canvas, for
example—would create “pictures of cheerleader uniforms.” Post, at 10 (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 Petitioner 48–49.

															This is not a bar to copyright. Just as
two-dimensional fine art corresponds to the shape of the canvas on
which it is painted, two-dimensional applied art correlates to the
contours 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
first 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 article. The statute does not
support that distinction, nor can it be reconciled with the
dissent’s recognition that “artwork printed on a t-shirt” could be
protected. Post, at 4 (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 fixed in the tangible medium of the
uniform fabric. 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
manufacturing 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 surface
designs in any tangible medium of expression—a uniform or
otherwise.[ 2 ]

															D

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

															1

															Petitioner first 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
copyrightable work and if the useful article from which it
was extracted would remain equally useful. In other words,
copyright 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
article,” 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 removed 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 cheerleading uniform is unnecessary. The focus of the
separability inquiry is on the extracted feature and not on any
aspects of the useful article that remain after the imaginary
extraction. 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 useful 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. Indeed, such a requirement would
deprive the Mazer statuette of protection had it been
created first 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 flawed
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
statute expressly protects two- and three-dimensional “applied
art.” §101. “Applied art” is art “employed in the decoration,
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) (defining “applied” as “[p]ut to practical use”).
An artistic feature that would be eligible for copyright protection
on its own cannot lose that protection simply because it was first
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
protectable 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 remain after the artistic feature has been imaginatively
separated from the article, we necessarily abandon the distinction
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 physically 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 conceptual 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 conceptual 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 “objective” components, Reply Brief 9, into our
test to provide guidance to the lower courts: (1) “whether the
design elements can be identified as reflecting the designer’s
artistic judgment exercised independently of functional influence,”
Brief for Petitioner 34 (emphasis deleted and internal quotation
marks omitted), and (2) whether “there is [a] substantial
likelihood that the pictorial, graphic, or sculptural feature would
still be marketable to some significant segment of the community
without its utilitarian function,” id., at 35 (emphasis
deleted and internal quotation marks omitted).

															We reject this argument because neither
consideration is grounded in the text of the statute. The first
would require the decisionmaker to consider evidence of the
creator’s design methods, purposes, and reasons. Id., at 48.
The statute’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 Pacific 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 final
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 popular 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 final
judges of the worth of pictorial illustrations, outside of the
narrowest and most obvious limits”).

															3

															Finally, petitioner argues that allowing the
surface decorations 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
protection for industrial designs, including clothing, when it
enacted the 1976 Act, see id., at 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 specific 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 reasons that Congress
intends to channel intellectual property claims for industrial
design into design patents. It therefore urges us to approach this
question with a presumption against copyrightability. Id., at 27.

															We do not share petitioner’s concern. As an
initial matter, “[c]ongressional inaction lacks persuasive
significance” in most circumstances. Pension Benefit Guaranty
Corporation v. LTV Corp. , 496 U. S. 633, 650 (1990)
(internal quotation marks omitted). Moreover, we have long held
that design 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
toward protection for industrial design would undermine Congress’
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.

															III

															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 affirmed.

															It is so ordered. Notes 1 We do not today hold that
the surface decorations are copyrightable. We express no opinion on
whether these works are sufficiently original to qualify for
copyright protection, see Feist Publications , Inc. v. Rural Telephone Service Co. , 499 U. S. 340 –359 (1991), or
on whether any other prerequisite of a valid copyright has been
satisfied. 2 The dissent suggests that
our test would lead to the copyrighting of shovels. Post, at
7; Appendix to opinion of Breyer, J., fig. 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. SUPREME COURT OF THE UNITED STATES

															_________________

															No. 15–866

															_________________

															STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY BRANDS, INC., et al.

															on writ of certiorari to the united states
court of appeals for the sixth circuit

															[March 22, 2017]

															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 Notes 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 separability 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) (separability 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 11,
n. 1; 17 U. S. C. §102(a) (“Copyright protection
subsists, in accordance with this title, in original works of
authorship fixed in any tangible medium 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 11,
however, I note this Court’s recognition that “the requisite level
of creativity [for copyrightability] is extremely low; even a
slight amount will suffice,” 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). 3 That Varsity’s designs
can be placed on jackets or T-shirts without replicating a
cheerleader’s uniform supports their qualification as fabric
designs. The dissent acknowledges that fabric designs are
copyrightable, but maintains that Varsity’s designs do not count
because Varsity’s submissions depict clothing, not fabric designs. Post , at 10–11. But registrants claiming copyrightable
designs may submit drawings or photos of those designs as they
appear on useful articles. See Compendium of U. S. Copyright
Office Practices §1506 (3d ed. 2014) (“To register a copyrightable
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 (artwork).” Appendix, infra , at 4–7, 9–10,
12–14. 4 The majority declines to
address this route to decision because, it says, Varsity has not
advanced it. Ante , at 5–6. I read Varsity’s brief
differently. 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 (disclaiming the need for
separability analysis because the designs are themselves PGS
works). SUPREME COURT OF THE UNITED STATES

															_________________

															No. 15–866

															_________________

															STAR ATHLETICA, L. L. C., PETITIONER v. VARSITY BRANDS, INC., et al.

															on writ of certiorari to the united states
court of appeals for the sixth circuit

															[March 22, 2017]

															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 Office 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 1.

															Look at the designs that Varsity submitted to
the Copyright Office. 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 “replicate[s],”
the underlying useful article of which they are a part. Ante, at 1, 10. Hence the design features that Varsity seeks
to protect are not “capable of existing independently o[f] the
utilitarian aspects of the article.” 17 U. S. C.
§101.

															I

															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 identified separately from, and are
capable of existing independently of, the utilitar-ian aspects of
the article.” Ibid . But what, we must ask, do the words
“identified separately” mean? Just when is a design separate from
the “utilitarian aspect of the [useful] article?” The most direct,
helpful aspect of the Court’s opinion answers this question by
stating:

															“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
replica could itself be copyright-able, it would not give rise to
any rights in the useful article that inspired it.” Ante, at
7–8.

															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 useful
article.” Ante, at 1, 17. They help clarify the concept of
separateness. Cf. 1 M. Nimmer & D. Nimmer, Nimmer on Copyright
§2A.08[A][1] (2016) (Nimmer) (describing courts’ difficulty in
applying that concept). They are consistent 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 reflect
long held views of the Copyright Office. 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 Report for the Copyright Act of 1976 provides. It says:

															“Unless the shape of an automobile,
airplane, ladies’ dress, food processor, television set, or any
other industrial product contains some element that, physically
or conceptually , can be identified 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
sculpture) be physically removed from the article (and considered
separately), all the while leaving the fully functioning
utilitarian object in place? If not, can one nonetheless conceive
of the design features separately without replicating a picture of
the utilitarian object? If the answer to either of these questions
is “yes,” then the design is eligible for copyright protection.
Otherwise, it is not. The abstract nature of these questions makes
them sound difficult to apply. But with the Court’s words in mind,
the difficulty tends to disappear.

															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 fixture
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, assuming it otherwise
qualifies, 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 configuration 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 conceptualizing 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 article. We simply perceive the cat
separately, as a small cat figurine that could be a copyrightable
design work standing alone that does not replicate the lamp. Hence
the cat is conceptually separate from the utilitarian
article that is the lamp. The pair of lamps pictured at Figures 1
and 2 in the Appendix to this opinion illustrate this
principle.

															Case law, particularly case law that Congress
and the Copyright Office have considered, reflects the same
approach. Congress cited examples of copyrightable design works,
including “a carving on the back of a chair” and “a floral relief
design on silver flatware.” H. R. Rep., at 55. Copyright Office
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] floral relief
decorating the handle of a spoon.” Compendium §924.2(B). Courts
have found copyrightable matter 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 Furniture Int’l , Inc. v. Collezione Europa USA, Inc. , 618 F. 3d 417, 431–435 (CA4
2010) ( per curiam ), and designs on laminated floor
tiles, see Home Leg-end, 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, fig. 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); candleholders
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. International 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 themselves make up the
shape of the spoon, candleholders, or wheel covers of which they
are a part. And spoons, candleholders, and wheel covers are useful
objects, as are the old shoes depicted in Van Gogh’s painting. More
importantly, one cannot easily imagine or otherwise conceptualize
the design 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
floral 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 floral
design 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 article?” If so, the design is not
separable from the useful article. If not, it is.

															In referring to imagined pictures and the like,
I am not speaking technically. I am simply trying to explain an
intuitive idea of what separation is about, as well as how I
understand 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 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 others 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.

															II

															To ask this kind of simple question—does the
design picture the useful article?—will not provide an answer in
every case, for there will be cases where it is difficult 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 focusing
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 1, 17. 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 functional mass-produced objects he
designated as art. See Appendix, fig. 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 inseparable 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 McKenna
& Strandburg, Progress and Competition in Design, 17 Stan.
Tech. L. Rev. 1, 48–51 (2013). But, if they are one, Congress did
not intend a century or more of copyright protection.

															III

															The conceptual approach that I have described
reflects 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 benefit of
copyright protection, which is to provide 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 include the higher prices that can accompany the grant
of a copyright monopoly. They also can include (for those wishing
to display, sell, or perform a design, film, work of art, or piece
of music, for example) the costs of discovering whether there are
previous copyrights, of contacting copyright holders, and of
securing permission to copy. Eldred v. Ashcroft , 537
U. S. 186 –252 (2003) (Breyer, J., dissenting). Sometimes, as
Thomas Jefferson wrote to James Madison, costs can outweigh “the
benefit 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 benefits and
drawing copyright’s statutory lines. Courts must respect those
lines and not grant copyright protection where Congress has decided
not to do so. And it is clear that Congress has not 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 protection 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 introduced since 1914); e.g., H. R. 5055, 109th Cong., 2d Sess.: “To Amend title 17,
United States Code, to provide protection for fashion design”
(introduced Mar. 30, 2006; unenacted). Congress has left “statutory
. . . protection . . . largely unavailable for
dress designs.” 1 Nimmer §2A.08[H][3][a]; Raustiala & Sprigman,
The Piracy Paradox: Innovation and Intellec-tual 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 protection. Patent design protection is available. 35
U. S. C. §§171, 173. A maker of clothing can obtain
trademark protection under the Lanham Act for signature features of
the clothing. 15 U. S. C. §1051 et seq. And a
designer who creates an original textile design can receive
copyright protection 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 unforeseeable 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 Economy 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 7–8.

															IV

															If we ask the “separateness” question
correctly, the answer here is not difficult to find. The majority’s
opinion, in its appendix, depicts the cheerleader dress designs
that Varsity submitted to the Copyright Office. Can the design
features in Varsity’s pictures exist separately from the
utilitarian 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 constitute a
part?

															Consider designs 074, 078, and 0815. They
certainly look like cheerleader uniforms. That is to say, they look
like pictures of cheerleader uniforms, just like Van Gogh’s old
shoes look like shoes. I do not see how one could see them
otherwise. Designs 299A and 2999B present slightly closer
questions. 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
five 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.

															Were I to accept the majority’s invitation to
“imaginatively remov[e]” the chevrons and stripes as they are
arranged on the neckline, waistline, sleeves, and skirt of each
uniform, and apply them on a “painter’s canvas,” ante, at
10, that painting would be of a cheerleader’s dress. The esthetic
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 separate, 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 majority 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
rectangular space depicting chevrons and stripes, like 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 surface decorations whose “treatment
and arrangement” are coextensive 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 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 copyright 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 7. That is to say, one cannot obtain
a copyright that would give its holder “any rights in the useful
article that inspired it.” Ante, at 8.

															With respect, I dissent.

Summary: The Supreme Court ruled that a feature incorporated into the design of a useful article is eligible for copyright protection only if it meets two criteria: it can be perceived as a two- or three-dimensional work of art separate from the useful article, and it would qualify for copyright protection on its own or when fixed in another tangible medium. This case concerned the copyright eligibility of cheerleading uniform designs, with the Court finding that the designs could exist independently of the uniforms as two-dimensional works of art and thus were eligible for copyright protection.