Justice Thomas wrote on behalf of the court, with the support of all but Justice Ginsberg and Justice Breyer. Justice Ginsburg would have reached the same result in a different way and Justice Breyer would have held these designs are of a useful article, beyond the purview of copyright.
The Court focused on a two part standard to determine if the design is separable from the useful article. The first prong is if a feature of a useful item can be perceived as a two- or three- dimensional work of art separate from the useful article. If the first prong can be answered in the affirmative, then the second prong asks if the separate work of art would qualify as a protectable pictorial, graphic, or sculptural work. Star Athletica, 1-2. This test was drawn from the Copyright statute and is to a degree a restatement of the statute. Id. at 7.
The first prong can be understood fairly broadly. The test demands taking the particular graphic design elements and putting them somewhere else. This method, “imaginatively removing the surface decorations from the uniforms and applying them [to] another medium”, allows for the aesthetic design elements to be removed from the underlying functional item. Id. at 10.
Once the first prong is satisfied, the second prong is fairly easy to satisfy as well. The bar to copyright is not high, as the goal is to encourage the arts. So long as the design elements can satisfy the traditional and basic copyright test, it will qualify for copyright protections.
This may have the effect of significantly expanding what is and is not copyrightable. It could now be interpreted any aesthetic design choice could have a potential claim to protection under copyright. Think of a carved handrail, the particular scrolling on the end could potentially be separable and copyrightable under this decision. While this may be an area of legal overlap between patent and copyright, there is a potential area of concern.
A design element of a useful article could be copyrighted and protected for the life of the author plus 70 years. On the other hand, a patent only exists for 20 years. This difference in time could lead to inequitable results and raise arguments that the copyright protection lasts too long or patent protection too short.
Star Athletica is an interesting case for Copyright and will have significant impacts going forward.