By: Olivera Medenica, Anna Radke
On October 31, 2016 the Supreme Court heard arguments in Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015), cert. granted in part sub nom. Star Athletica, L.L.C. v. Varsity Brands, Inc., 136 S. Ct. 1823, 194 L. Ed. 2d 829 (2016). The case has made the news, particularly in fashion law circles, as it involves the issue of whether certain designs featured on cheerleading uniforms are copyrightable or are rather non-copyrightable functional elements that are inherently a part of cheerleading uniform designs.
There is a significant circuit split on this issue as there are at least 10 tests used by courts and commentators to determine whether the design of, or in, an article of clothing is separable from the apparel’s functional elements. The outcome of this case therefore hinges upon which test is applicable, and how narrowly or broadly a court defines an item’s utilitarian function.
While proponents of greater protection for fashion designs have advocated for the expansion of the Copyright Act, the Star Athletica case does not deal with copyright protection for articles of clothing as a whole. See e.g. Innovative Design Protection Act (IDPA) of 2012, S. 3523, 112th Cong. (2012); Innovative Design Protection and Piracy Prevention Act (IDPPA), H.R. 2511, 112th Cong. (2011). Rather, the issue is what test must be used to separate the purely creative, or artistic, component of the design from its utilitarian function.
The parties in the case are competing businesses in the design and manufacturing of cheerleading uniforms. Plaintiffs Varsity Brands argues that it hires designers who sketch unique designs for Varsity’s cheerleading uniforms, and to protect these designs, it has registered hundreds of two-dimensional graphic designs with the Copyright Office, including the designs, which are the subject of the lawsuit. After noticing Star Athletica’s similar designs, Varsity filed a copyright infringement action claiming Star Athletica copied Varsity’s cheerleading uniform designs.
Judge Robert H. Cleland, from the Western District of Tennessee at Memphis, concluded that a cheerleading uniform is not a cheerleading uniform without stripes, chevrons, zigzags, and colorblocks – and therefore, Varsity’s copyrights are invalid. Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 (W.D. Tenn. Mar. 1, 2014). In a split decision, the Sixth Circuit reversed, holding that the designs are copyrightable pictorial, graphic, or sculptural works. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).
The court set forth a five-factor/question test to determine whether “pictorial, graphic, or sculptural features” are conceptually separable from the utilitarian function of a useful article:
1) Is the design a pictorial, graphic, or sculptural work?
2) If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article?
3) What are the utilitarian aspects of the useful article?
4) Can the viewer of the design identify “pictorial, graphic, or sculptural features” separately from the utilitarian aspects of the useful article?
5) Can “the pictorial, graphic, or sculptural features” of the design of the useful article exist independently of the utilitarian aspects of the useful article?
Useful Articles and Separable Designs
The Copyright Act of 1976 provides protection for “original works of authorship fixed in any tangible medium of expression. . . .” 17 U.S.C. § 102(a) (2012). Among the “works of authorship” that the Act protects are “pictorial, graphic, and sculptural works.” Id. § 102(a)(5). “‘[P]ictorial, graphic, and sculptural works’ 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.” Id. § 101. “[T]he design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work,” and thus 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 utilitarian aspects of the article.” Id. “A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Id.
In other words, to determine whether an article is protectable, a court must determine: (1) whether the article is a useful article, and (2) if it is whether it incorporates protectable elements separate from the utilitarian aspects of the useful article. The analysis above is deceptively simple because in many instances the elements claimed to be protectable are not physically separable from the item – thus resulting in a “conceptual separability” analysis. This analysis is precisely why Star Athletica is before the Supreme Court – there are a number of different approaches to conceptual separability:
(1) The Copyright Office’s Approach: “A pictorial, graphic, or sculptural feature satisfies [the conceptual-separability] requirement only if the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works—one an artistic work and the other a useful article.” COMPENDIUM III § 924.2(B).
(2) The Primary-Subsidiary Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are “primary” to the “subsidiary utilitarian function.” Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980).
(3) The Objectively Necessary Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are not necessary to the performance of the utilitarian function of the article. Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985).
(4) The Ordinary-Observer Approach: A pictorial, graphic, or sculptural feature is conceptually separable if“the design creates in the mind of the ordinary[, reasonable] observer two different concepts that are not inevitably entertained simultaneously.” Id. at 422 (Newman, J., dissenting).
(5) The Design-Process Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the“design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences.” Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).
(6) The Stand-Alone Approach: A pictorial, graphic, or sculptural feature is conceptually separable if“the useful article’s functionality remain[s] intact once the copyrightable material is separated.” Pivot Point Int'l, Inc. v. Charlene Prod., Inc., 372 F.3d 913, 934 (7th Cir. 2004) (Kanne, J., dissenting).
(7) The Likelihood-of-Marketability Approach: A pictorial, graphic, or sculptural feature is conceptually separable if “‘there is substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.’” Galiano v. Harrah’s Operating Co., 416 F.3d 411, 419 (5th Cir. 2005) (quoting 1 NIMMER ON COPYRIGHT § 2.08[B]).
(8) Patry’s Approach: There no need to engage in a separability analysis if (A) the work is the design of a three-dimensional article, and (B) the design is not of a “useful article.” 2 PATRY ON COPYRIGHT§ 3:145. When determining whether pictorial, graphic, or sculptural features are protectable under the Copyright Act, the focus should be on whether those pictorial, graphic, or sculptural aspects are separable from the “utilitarian aspects of the article, not the“article” because “the protected features need not be capable of existing apart from the article, only from its functional aspects.” Id. § 3:146. This task requires two additional steps. Id. First, the court “must be able to discern pictorial, graphic, or sculptural features.” Id. Second, the pictorial, graphic, or sculptural features“must be capable of existing as intangible features independent of the utilitarian aspects of the useful article, not independent of the whole article. . . .” Id. This necessitates asking “whether the pictorial, graphic, or sculptural features are dictated by the form or function of the utilitarian aspects of the useful article.” Id. If form or function—rather than aesthetics—dictates the way that the pictorial, graphic, or sculptural features appear, then those pictorial, graphic, and sculptural features are not capable of existing independently of the utilitarian aspects of the useful article. Id.
(9) The Subjective-Objective Approach: Conceptual separability is determined by balancing (A) “the degree to which the designer’s subjective process is motivated by aesthetic concerns”; and(B) “the degree to which the design of a useful article is objectively dictated by its utilitarian function.” See Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separablility in American Copyright Law, 69 OHIO ST. L.J. 109, 141 (2008). “The first factor requires courts to consider the degree to which aesthetic concerns, as opposed to functional ones, motivate the designer.” Id. The second factor considers whether “the design is mostly dictated by function” or “hardly dictated by function at all.” Id. at142. If the design of the useful article “is mostly dictated by function,” then that fact“weigh[s] against conceptual separability, and therefore, against copyright protection.” Id. If the design “is hardly dictated by function at all” then that fact“weigh[s] in favor of a finding of conceptual separability.” Id.
Conceptual Separability and Cheerleading Uniforms
The Sixth Circuit adopted its own hybrid approach consisted of the five part test outlined at the beginning of this article, based upon its own reading of the Copyright Act. The Sixth Circuit defined a cheerleading uniform as an item whose purpose is to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 485-87 (6th Cir. 2015). The majority in Sixth Circuit’s opinion concluded that arrangement of stripes, zigzags, chevrons and color blocking did not enhance the garments’ functional attributes and, therefore, were merely decorative elements subject to copyright protection. Id.
In contrast, the dissent characterized the Copyright law on the subject matter to be “a mess” and that clarity is needed as the stakes are high for the fashion industry. The dissent took the position that these designs on cheerleading uniforms do serve a utilitarian function in that they identify the wearer as a cheerleader – and as a consequence, the designs cannot be afforded protection under the Copyright Act.
The Supreme Court has a unique opportunity to rule on an issue that directly impacts the fashion industry, and this decision will bear consequences on how the business protects itself from infringement, at both ends of the dispute spectrum. We will continue to the monitor this case and will report back with any new updates.