On May 2, 2016, the U.S. Supreme Court granted review of the Sixth Circuit’s August 2015 ruling in Varsity Brands Inc. v. Star Athletica LLC[i] The Supreme Court will determine the proper test to assess whether Varsity’s two-dimensional cheerleading uniform designs are entitled to copyright protection. Notably, this is the first time the Supreme Court will address copyright protection in the context of useful articles and apparel. Thus, its decision bears the potential for a far-reaching impact on the apparel and fashion industries.
The Copyright Act of 1976 extends copyright protection to “original works of authorship fixed in any tangible medium of expression.”[ii] Inclusive of “works of authorship” are “pictorial, graphic, and sculptural works.”[iii] This encompass various works of art including both two and three dimensional works.[iv] Significant to this case, “the design of a useful article[v] … shall be considered a pictorial, graphic, or sculptural work,” and subject to copyright “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.”[vi] Critical to the case at hand, these provisions together create a two-part inquiry to determine whether an article is copyrightable. First, “whether the design for which the author seeks copyright protection is a ‘design of a useful article,’ and if so, second, whether the design of the useful article ‘incorporates pictorial, graphic or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.’”[vii]
Varsity designs and manufactures athletic apparel and accessories, including cheerleading gear. Varsity registered several “two-dimensional graphic designs” with the U.S. Copyright Office for several of its cheerleading uniform designs (see below).[viii] Its designs include various graphic elements consisting of “original combinations, positioning, and arrangements of elements which include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s coloring, and shapes …”[ix]
Star markets and sells uniforms and accessories for various sports, including cheerleading. Star circulated marketing materials for cheerleading uniforms strikingly similar to Varsity’s five registered designs. After encountering these advertisements, Varsity filed suit against Star in the Western District of Tennessee, alleging five claims of copyright infringement for “selling[,] distributing, [and] advertising … goods bearing .. design[s] that [are] copied from and substantially similar” to Varsity’s designs.[x]
At the district court level, both parties filed motions for summary judgment. Star asserted that it was entitled to summary judgment on Varsity’s copyright-infringement claims on the grounds that Varsity could not establish ownership of a valid copyright. Specifically, Star purported that (1) Varsity’s designs were for useful articles and therefore not entitled to copyrightability; and (2) the pictorial, graphic or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms, likewise making the designs ineligible for copyright protection.[xi]
The district court ruled in favor of Star, finding Varsity’s designs not copyrightable because they are not physically or conceptually separable from the utilitarian function of a cheerleading uniform. Indeed, the court emphasized that the “‘colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular’ make the garments they appear on ‘recognizable as a cheerleading uniform.’”[xii] Essentially, the district court determined that the aesthetic features and functional purpose of a cheerleading uniform are inseparable from one another.
On appeal, the Sixth Circuit reversed. Significantly, it reviewed a multitude of different tests set forth by the various circuit courts in determining the copyrightability of useful articles. Ultimately, it constructed a five factor test to determine whether “pictorial, graphic, or sculptural features” are conceptually separable from the utilitarian function of a useful article.[xiii] In applying the test, the Sixth Circuit concluded that the graphic features of Varsity’s designs “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of” the cheerleading uniforms, i.e. the useful article.[xiv] Thus, it found that Varsity’s graphic designs constitute copyrightable subject matter.
Following this decision, Star appealed to the U.S. Supreme Court, focusing its petition for certification on the need to clarify which of at least ten tests used by the various circuit courts should be applied in determining whether a design feature on a useful article is entitled to copyright protection.[xv] In granting certiorari, the Court noted it will determine one issue on appeal – “[w]hat is the appropriate test to determine when a feature of the design of a useful article is protectable under § 101 of the Copyright Act?”[xvi]
Because little protection currently exists for fashion designers under U.S. Copyright law, the Court’s decision has the potential to significantly impact the fashion industry and related markets. Until now, the fashion industry has longed for clarity to determine whether a design feature on a useful article is subject to protection under U.S. copyright law. Should the Court rule in favor of Star and support application of a more preclusive test, this decision could change the legal landscape for copyright plaintiffs and defendants in apparel cases, making it more difficult to protect such designs.
The case is currently set for argument on October 31, 2016.
[i] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (2015).
[ii] 17 U.S.C. § 102(a).
[iii] Id. § 102(a)(5).
[iv] Id. at § 101.
[v] 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.”).
[vii] Varsity Brands, 799 F.3d at 481.
[viii] Id. at 471.
[x] Id. at 474-75.
[xi] Id. at 475.
[xiii] Id. at 489-491 (the factors are (1) Is the design a pictorial, graphic, or sculptural work? (2) If yes, then is the design a useful article? (3) What are the utilitarian aspects of the useful article? (4) Can the viewer identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? and (5) Can the pictorial, graphic, or sculptural features of the design exist independently of the utilitarian aspects of the useful article?).
[xiv] Id. at 478.
[xv] Brief of Petitioner at 11-12, Star Athletica, LLC v. Varsity Brands, Inc., (No. 15-866), 2016 WL 3923923, at *11-12 (“This case is the opportunity to clarify the appropriate test, to place garment design squarely in either the public domain or the design-patent regime, as Congress intended, and ensure that the stripes, chevrons, and color blocks of a cheerleading-uniform design do not receive a century of copyright protection.”).
[xvi] Id. at i, 2016 WL 3923923 at *1 (Noting, “[u]nder the Copyright Act, a ‘useful article’ such as a chair, a dress, or a uniform cannot be copyrighted. 17 U.S.C. § 101. The article’s component features or elements cannot be copyrighted either, unless capable of being ‘identified separately from, and . . . existing independently of, the utilitarian aspects of the article.’ Circuit courts, the Copyright Office, and academics have proposed at least nine different tests to analyze this separability. The Sixth Circuit rejected them all and created a tenth.”) (internal citations omitted).