When are clothing designs sufficiently severable from the utilitarian aspects of the clothing so that the designs can be protected by copyright? That is a question courts have wrestled with for years, and the Sixth Circuit Court of Appeals answered in Varsity Brands, Inc. v. Star Athletica LLC, a case involving a long-running dispute between Varsity Brands, a company which designs, manufactures and sells cheerleading apparel, and its competitor Star Athletica (“Star”). It is also a question that may be headed to the U.S. Supreme Court.
The dispute began in 2010, when Varsity Brands sued Star for infringing on Varsity Brands’ copyrighted designs, alleging that Star had copied Varsity’s two-dimensional stripes, colors and other ornamentation familiar to cheerleading uniforms. Some of Varsity Brands’ designs are reproduced below, followed by Star’s alleged copies:
As we reported last year, the district court held that Varsity Brands’ designs were utilitarian and not severable from the garment’s function as cheerleading uniforms because the “colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular make the garment they appear on recognizable as a cheerleading uniform.” Because the utilitarian aspects of a design cannot be copyrighted, the district court dismissed Varsity Brands’ claims.
The Sixth Circuit Reverses
The Sixth Circuit reversed, holding that Varsity Brands’ designs could be separated from the utilitarian aspects of the cheerleading uniforms. The Sixth Circuit first addressed the question of how much deference it should give to the United States Copyright Office’s determination of the designs’ copyrightability. Varsity Brands had successfully registered each of the five designs at issue in the lawsuit with the Copyright Office.
The Court first distinguished between Chevron deference, which is appropriate when Congress has expressly or impliedly delegated the power to promulgate rules of law to an agency, and Skidmore deference, which is appropriate when an agency has not been delegated such power, but nonetheless has “specialized experience.” The Sixth Circuit held that the Copyright Office’s determination was entitled to Skidmore deference. Even though the Copyright Office’s decision to register Varsity Brands’ designs did not carry the power of law, the Sixth Circuit found that the Copyright Office’s “expertise in identifying and thinking about the difference between art and function” surpassed the Court’s expertise in such matters, making Skidmore deference appropriate.
The Sixth Circuit next addressed the appropriate test for determining whether pictorial, graphic or sculptural features of a design are separable from the utilitarian aspects of the article. The Court concluded that the best approach was for courts to engage in the following five-question inquiry, grounded in the language of the Copyright Act:
- Is the design a pictorial, graphic or sculptural work?
- If the design is a pictorial, graphic or sculptural work, then is it a design of a useful article—an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information?
- What are the utilitarian aspects of the useful article?
- Can the viewer of the design identify pictorial, graphic or sculptural features separately from the utilitarian aspects of the useful article?
- Can the pictorial, graphic or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?
The Sixth Circuit then applied this test to Varsity Brands’ designs, answering the first two questions in the affirmative. The Court found that the designs at issue consisted of graphic works, and were also designs of useful articles – namely, “cheerleading uniforms and sportswear.” With respect to identifying the precise utilitarian aspects of the cheerleading uniforms under question three, the Court held that the uniforms’ purpose was to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” The Court expressly rejected Star’s argument that the designs’ “decorative function” was also a utilitarian aspect of the cheerleading uniform, finding that such a holding would render a lot of artwork and all fabric designs — whose sole function is to make clothing more attractive — ineligible for copyright protection.
The Court then addressed the severability of the designs from the utilitarian aspects of the cheerleading uniforms. Rejecting the district court’s finding that the designs and the utilitarian aspects of the uniforms were inseparable, the Court held that the designs did not in any way “enhance the cheerleading uniform’s functionality qua clothing.” The wearer of a cheerleading uniform could jump, kick and perform all other functions necessary for cheerleading even if the uniform was plain and white, and devoid of Varsity Brands’ designs. Further, the Court found that the uniforms would still be “easily identified as cheerleading uniforms without any stripes, chevrons, zigzags, or color-blocking.”
Finally, the Court addressed whether Varsity Brands’ designs could exist separately from the cheerleading uniforms. The Court found that they could, pointing to the fact that the designs could be added to garments other than cheerleading uniforms, including t-shirts, warm-ups, and jackets. The Court also pointedly noted that nothing prevented Varsity Brands’ from taking its designs, framing them, and hanging them on the wall as art.
In coming to its holding, the Court found that its conclusion was faithful to the distinction other courts have drawn between fabric designs (which are designs imprinted on articles of clothing) and dress designs (which consist of the shape, cut and style of garments). While courts have held that fabric designs can be separated from the utilitarian aspects of the clothing and are copyrightable, dress designs are often considered too intertwined with the utilitarian function of the garment to be copyrightable. Because Varsity’s designs fell into the category of fabric designs, the Sixth Circuit found that they were protectable under the Copyright Act.
Following the Sixth Circuit’s decision, Star filed a petition for rehearing en banc, which was denied. Star now intends to take the case to the Supreme Court and has filed a motion requesting that the Sixth Circuit stay the issuance of its mandate while Star prepares its petition for a writ of certiorari. It remains to be seen whether and how the Supreme Court will answer what Star has argued is “the single most vexing, unresolved question in all of copyright: determining whether an element of a useful article is conceptually separable from the article and therefore protectable.”