Go! Fight! Win! Sixth Circuit Hands Varsity Victory in Cheerleading Uniform Copyright Contest | Practical Law

Go! Fight! Win! Sixth Circuit Hands Varsity Victory in Cheerleading Uniform Copyright Contest | Practical Law

In Varsity Brands v. Star Athletica, the US Court of Appeals for the Sixth Circuit determined that certain aspects of cheerleading uniforms are copyrightable. In doing so, it held that the Copyright Office's determination that a design is protectable is entitled to deference and that the Copyright Act protects a useful article's pictorial, graphic or sculptural features even if those features are not physically separable as long as they are conceptually separable from the article's utilitarian aspects.

Go! Fight! Win! Sixth Circuit Hands Varsity Victory in Cheerleading Uniform Copyright Contest

by Practical Law Intellectual Property & Technology
Published on 21 Aug 2015 • USA (National/Federal)
In Varsity Brands v. Star Athletica, the US Court of Appeals for the Sixth Circuit determined that certain aspects of cheerleading uniforms are copyrightable. In doing so, it held that the Copyright Office's determination that a design is protectable is entitled to deference and that the Copyright Act protects a useful article's pictorial, graphic or sculptural features even if those features are not physically separable as long as they are conceptually separable from the article's utilitarian aspects.
On August 20, 2015, in Varsity Brands v. Star Athletica, a panel majority of the US Court of Appeals for the Sixth Circuit determined that certain aspects of cheerleading uniforms are copyrightable and held that:
  • The US Copyright Office's determination that a design is protectable under the Copyright Act is entitled to deference.
  • The Copyright Act protects the pictorial, graphic or sculptural features of a useful article's design even if those features cannot be physically removed from a useful article as long as they are conceptually separable from the utilitarian aspects of the article.
(No. 14-5237, (6th Cir. August 19, 2015).)
Varsity Brands, Inc., Varsity Spirit Corporation and Varsity Spirit Fashions & Supplies, Inc. (collectively "Varsity") designs and manufactures apparel and accessories for cheerleading and other athletic activities. Its designers create design concepts that include combinations, positionings and arrangements of elements such as chevrons, lines, curves, stripes, angles, diagonals, and inverted V's. Varsity sought and received copyright registration for two-dimensional artwork for many of its designs, including the designs that are the subject of the lawsuit.
  
  
  
Star Athletica, LLC also markets and sells uniforms and accessories for cheerleading. Varsity sued Star for, among other claims, copyright infringement based on five of Varsity's designs having copyright registrations. Star argued that Varsity did not have a valid copyright in the five designs because:
  • Varsity's designs are for useful articles that are not copyrightable.
  • The pictorial, graphic or sculptural elements of Varsity's designs are not physically or conceptually separable from the uniforms, making them ineligible for copyright protection.
The US District Court for the Western District of Tennessee entered summary judgment in Star's favor on the copyright infringement claim concluding that Varsity's designs are not copyrightable essentially because the aesthetic features of the cheerleading uniform merge with the functional purpose of the uniform. In other words, the designs make the garments on which they appear recognizable as a cheerleading uniform. Varsity appealed and argued, among other things, that the district court was wrong because the district court:
  • Did not give appropriate deference to the Copyright Office's copyrightability determination.
  • Used the wrong approach to determine whether a design is a protectable pictorial, graphic or sculptural work that is separable from the utilitarian aspects of the article.
The Sixth Circuit panel majority noted that Varsity successfully registered all five designs, with three being registered within five years after first publication. Therefore under 17 U.S.C. § 410(c):
  • Three of the designs that were registered within the five year window are entitled to a presumption of validity.
  • The court has discretion on the evidentiary weight it should give to the other two registrations.
The majority then determined that it must give the Copyright Office's determination Skidmore deference (see Skidmore v. Swift & Co., 323 U.S. 134 (1944)) because:
  • A copyright registration is not a product of a formal process or the type of process that suggests that the Copyright Office is engaging in any sort of rulemaking.
  • The registrations apply to individual applications and are conclusive only as to the application under review.
Specifically, the Sixth Circuit panel majority concluded that:
  • The Copyright Office's copyright registration is entitled to a rebuttable presumption of validity.
  • Star had the burden to overcome the presumption.
It then determined that the various designs are copyrightable based on its analysis of the separability of Varsity's cheerleading uniforms' designs' graphic features. It reviewed case law and commentary concerning the separability test and held that the Copyright Act protects the pictorial, graphic or sculptural features of a useful article's design even if those features cannot be removed physically from the useful article, as long as they are conceptually separable from the utilitarian aspects of the article. In applying this test, the majority identified five questions that should be answered to make this determination:
  • Is the design a pictorial, graphic or sculptural work?
  • If so, is it a design of a useful article?
  • If not, there is no need to address separability. If so, what are the utilitarian aspects of the useful article?
  • Can the viewer identify pictorial, graphic or sculptural features separately from the utilitarian aspects of the article?
  • If not, the design is not copyrightable. If so, can the pictorial, graphic or sculptural features of the design exist independently of the utilitarian aspects of the useful article?
In applying this analytical framework to this case, the Sixth Circuit panel majority specifically rejected Star's argument that the pictorial, graphic or sculptural features are inextricably intertwined with the utilitarian aspects of the cheerleading uniform because they serve a decorative function. To rule otherwise, the majority said, would render nearly all artwork and fabric designs unprotectable. As a result, the majority 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 and are therefore copyrightable. Specifically, the majority noted that:
  • The arrangement of stripes, chevrons, zigzags and color-blocking are separably identifiable because:
    • the designs do not enhance the cheerleading uniform's functionality as clothing;
    • not all cheerleading uniforms must look alike to be cheerleading uniforms; and
    • the interchangeability of Varsity's designs is evidence that customers can identify differences between the graphic features of each design.
  • The designs can exist independently of the utilitarian aspects of the uniform because:
    • they can be incorporated into the surface of different types of garments; and
    • the interchangeability of Varsity's designs is evidence that the graphic design on the surface does not affect whether the uniform still functions as a cheerleading uniform.
The dissent, in contrast, would hold that there is no conceptual separability and that the designs are not copyrightable because:
  • The clothing's function should be defined more narrowly.
  • The stripes, braids and chevrons on a cheerleading uniform are integral to its function of identifying the wearer as a member of the cheerleading squad.
The dissent concluded with a plea that either Congress or the US Supreme Court or both clarify copyright law concerning garment design.