Designs on Cheerleader Uniforms Can Be Copyrighted

Varsity registered two-dimensional artwork copyrights for the five designs it claimed that Star Athletica infringed by selling cheerleading uniforms with very similar designs. Varsity sued Star for copyright infringement, unfair competition, and several Tennessee state causes of action in the U.S. District Court for the Western District of Tennessee. Both parties moved for summary judgment. The District Court agreed with Star that Varsity's copyrights were invalid because the designs were for useful articles (the uniforms) and were neither physically nor conceptually separable from the uniforms. Star had also claimed that Varsity's designs did not have enough originality to copyright, but that issue was not considered by the judge. The District Court concluded that the designs were those typically associated with sports in general and cheerleading in particular, making the garment “recognizable as a cheerleading uniform” because the aesthetic features of the uniform merged with the functional purpose of the uniform.

The District Court also granted Star summary judgment on the unfair competition claim and dismissed the remaining state court claims, because it declined to exercise supplemental jurisdiction over them when no federal claim remained.

On appeal, the Sixth Circuit first considered what, if any, deference it should give to the Copyright Office's decision that the designs were copyrightable. Three of the five registrations were entitled to a presumption of validity because they were registered within five years after first publication and the other two were within the court's discretion to presume valid. The District Court treated that presumption as fairly easy to rebut because of the Copyright Office's “cursory issuance of registrations.” However, the Sixth Circuit adopted a so-called ” Skidmore deference” to issuance of the certificates of registration, which gives respect to the agency's interpretation of a statute where the agency has “specialized experience and broader investigations and information available” than the judiciary. Although noting that other “courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from, and exist independently of, the article's utilitarian function,” the Sixth Circuit acknowledged that the Copyright Office “unquestionably has experience identifying useful articles and pictorial graphic, and sculptural works,” and that it had consistently applied the same interpretation of separability to Varsity's multiple designs similar to the ones at issue in this case. The Sixth Circuit found that the Copyright Office based its decisions to register Varsity's designs in sound legal reasoning and that its expertise in identifying the difference between art and function surpasses that of the court. Accordingly, the District Court should have given greater deference to the Copyright Office's determinations that Varsity's designs were copyrightable and required Star to do more to overcome the presumption of validity.

Conceptual Separability

In considering the substantive issue of whether the designs were separable from the uniforms' utilitarian function, the Sixth Circuit first determined that a “useful article” is one having “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” It then considered whether Varsity's graphic designs were physically or conceptually separable from the underlying cheerleader uniforms. The Copyright Office defines a physically separable item as “pictorial, graphic, or sculptural features that can be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” The Sixth Circuit observed that this test works best with a three-dimensional object, such as a hood ornament on an automobile or a statuette serving as a lamp base.

Where two-dimensional designs are at issue, courts often rely on the “conceptual separability” test appearing in the legislative history of the Copyright Act of 1976, where features that cannot be physically removed from the useful article are nevertheless conceptually separable from the utilitarian aspect of that article. The Sixth Circuit noted that the Copyright Office considers an engraving on a vase, a carving on the back of a chair, artwork printed on a t-shirt, or a drawing on the surface of wallpaper to be conceptually separable features, if the artistic feature and the useful article could both exist side-by-side and be perceived as fully realized, separate works of art and utility. The court then analyzed at length eight other approaches to conceptual separability, concluding that the hybrid approach employed by the Second and Fourth Circuits made the most sense. The Second Circuit held that a plush Halloween costume made to look like a stuffed toy animal was copyrightable because the design elements reflected the designer's artistic judgment exercised independently of the functional influences of the costume, but that a prom dress design consisting of the aesthetic selection and arrangement of sequins and beads in a pattern on the bust portion of a dress merged with the functionality of the dress as clothing for a special occasion. The Fourth Circuit used a similar approach in concluding that the design features adorning furniture were copyrightable because the designs were wholly unnecessary to the utilitarian function of the furniture and the designer's process reflected artistic judgment exercised independently of functional influences.

Applying that hybrid approach to the cheerleader costumes, the Sixth Circuit determined that a series of questions should be asked: 1) is the design a pictorial, graphic, or sculptural (“artistic”) work?; 2) is the artistic work a design of a useful article?; 3) what are the utilitarian aspects of the useful article?; 4) can the viewer of the design identify the artistic features separately from the utilitarian aspects?; and 5) can the artistic features exist independently of the utilitarian aspects of the useful article? The Sixth Circuit determined that: Varsity's designs were two-dimensional works of graphic art; they have an intrinsic utilitarian function outside of merely portraying the appearance of clothing or conveying information; cheerleading uniforms have the intrinsic utilitarian function of covering the body, wicking away moisture, and withstanding the rigors of athletic movements; the designs are not inextricably intertwined with those utilitarian aspects; cheerleading outfits are still easily identified without any graphic design elements; a graphic design and a blank cheerleading uniform can appear side by side, and the arrangement of graphic elements can exist independently of the utilitarian aspects of the uniform.

Therefore, Varsity's graphic designs were a copyrightable subject matter in the same way that fabric designs are copyrightable although dress designs are not. A design that graphically sets forth the shape, style, cut and dimensions for converting fabric into a finished dress or other garment cannot be separated from the utilitarian aspects of clothing to cover, protect and warm the body. As Varsity's designs are more like fabric design than dress design, the Sixth Circuit granted summary judgment to Varsity on the issue of the protectability of its designs, and remanded the case for the District Court to decide whether the designs lacked originality or were otherwise ineligible for copyright protection. The Sixth Circuit also restored the state law claims.

Judge McKeague dissented, observing that although the majority presented a thoughtful approach to the “metaphysical quandary” courts have wrestled with for years, there was no conceptual separability of Varsity's designs from the cheerleading uniforms, where a reasonable observer would not associate a blank outfit with cheerleading. The dissent argued that Congress or the Supreme Court should clarify copyright law with respect to garment design because the law in that area “is a mess.”

Conclusion

Fashion designers have been struggling for years to obtain some kind of protection similar to the apparel design protection available in some European countries. Congress has not been able to pass such legislation. One failed attempt was the Innovative Design Protection and Piracy Act, which would have covered certain fashion design for three years. Congress can be expected to continue to struggle with this issue, which pits designers against retailers.

Judith Grubner is a partner in the IP Group of Arnstein & Lehr and a member of this newsletter's Board of Editors. She can be reached at [email protected].

When is a graphic design a “work of authorship” that, when incorporated into the design of a useful article, is “identified separately from, and ' capable of existing independently of, the utilitarian aspects of the article”? That issue is at the heart of the Court of Appeals for the Sixth Circuit's decision in Varsity Brands, Inc. v. Star Athletica, LLC, No. 14-5237, ___ F.3d ___ (6th Cir. 2015). In deciding that the designs on cheerleader uniforms were more like copyrightable fabric designs than unprotectable garment designs, the Sixth Circuit undertook a lengthy analysis of “separability”; that is, when certain features of useful articles are capable of being copyrighted separately from the articles' functional aspects.

Case Background

Varsity Brands, Inc. and related companies registered as two-dimensional artwork a number of graphic designs for their cheerleading uniforms and other athletic apparel. Varsity's designers make sketches of design concepts that include original combinations, positioning, and arrangements of elements, including chevrons, lines, curves, stripes, angles, diagonals, inverted V's, coloring and other designs. The designers do not consider the functionality of the uniform or whether it will be easy to produce a full-sized uniform that resembles the sketch. Varsity decides whether to use the design on a uniform. Varsity's customers purchase the uniforms by choosing from many designs Varsity offers in catalogs and online, and then they choose the shape, colors, and braiding for the uniform.

Varsity registered two-dimensional artwork copyrights for the five designs it claimed that Star Athletica infringed by selling cheerleading uniforms with very similar designs. Varsity sued Star for copyright infringement, unfair competition, and several Tennessee state causes of action in the U.S. District Court for the Western District of Tennessee. Both parties moved for summary judgment. The District Court agreed with Star that Varsity's copyrights were invalid because the designs were for useful articles (the uniforms) and were neither physically nor conceptually separable from the uniforms. Star had also claimed that Varsity's designs did not have enough originality to copyright, but that issue was not considered by the judge. The District Court concluded that the designs were those typically associated with sports in general and cheerleading in particular, making the garment “recognizable as a cheerleading uniform” because the aesthetic features of the uniform merged with the functional purpose of the uniform.

The District Court also granted Star summary judgment on the unfair competition claim and dismissed the remaining state court claims, because it declined to exercise supplemental jurisdiction over them when no federal claim remained.

On appeal, the Sixth Circuit first considered what, if any, deference it should give to the Copyright Office's decision that the designs were copyrightable. Three of the five registrations were entitled to a presumption of validity because they were registered within five years after first publication and the other two were within the court's discretion to presume valid. The District Court treated that presumption as fairly easy to rebut because of the Copyright Office's “cursory issuance of registrations.” However, the Sixth Circuit adopted a so-called ” Skidmore deference” to issuance of the certificates of registration, which gives respect to the agency's interpretation of a statute where the agency has “specialized experience and broader investigations and information available” than the judiciary. Although noting that other “courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from, and exist independently of, the article's utilitarian function,” the Sixth Circuit acknowledged that the Copyright Office “unquestionably has experience identifying useful articles and pictorial graphic, and sculptural works,” and that it had consistently applied the same interpretation of separability to Varsity's multiple designs similar to the ones at issue in this case. The Sixth Circuit found that the Copyright Office based its decisions to register Varsity's designs in sound legal reasoning and that its expertise in identifying the difference between art and function surpasses that of the court. Accordingly, the District Court should have given greater deference to the Copyright Office's determinations that Varsity's designs were copyrightable and required Star to do more to overcome the presumption of validity.

Conceptual Separability

In considering the substantive issue of whether the designs were separable from the uniforms' utilitarian function, the Sixth Circuit first determined that a “useful article” is one having “an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” It then considered whether Varsity's graphic designs were physically or conceptually separable from the underlying cheerleader uniforms. The Copyright Office defines a physically separable item as “pictorial, graphic, or sculptural features that can be physically separated from the article by ordinary means while leaving the utilitarian aspects of the article completely intact.” The Sixth Circuit observed that this test works best with a three-dimensional object, such as a hood ornament on an automobile or a statuette serving as a lamp base.

Where two-dimensional designs are at issue, courts often rely on the “conceptual separability” test appearing in the legislative history of the Copyright Act of 1976, where features that cannot be physically removed from the useful article are nevertheless conceptually separable from the utilitarian aspect of that article. The Sixth Circuit noted that the Copyright Office considers an engraving on a vase, a carving on the back of a chair, artwork printed on a t-shirt, or a drawing on the surface of wallpaper to be conceptually separable features, if the artistic feature and the useful article could both exist side-by-side and be perceived as fully realized, separate works of art and utility. The court then analyzed at length eight other approaches to conceptual separability, concluding that the hybrid approach employed by the Second and Fourth Circuits made the most sense. The Second Circuit held that a plush Halloween costume made to look like a stuffed toy animal was copyrightable because the design elements reflected the designer's artistic judgment exercised independently of the functional influences of the costume, but that a prom dress design consisting of the aesthetic selection and arrangement of sequins and beads in a pattern on the bust portion of a dress merged with the functionality of the dress as clothing for a special occasion. The Fourth Circuit used a similar approach in concluding that the design features adorning furniture were copyrightable because the designs were wholly unnecessary to the utilitarian function of the furniture and the designer's process reflected artistic judgment exercised independently of functional influences.

Applying that hybrid approach to the cheerleader costumes, the Sixth Circuit determined that a series of questions should be asked: 1) is the design a pictorial, graphic, or sculptural (“artistic”) work?; 2) is the artistic work a design of a useful article?; 3) what are the utilitarian aspects of the useful article?; 4) can the viewer of the design identify the artistic features separately from the utilitarian aspects?; and 5) can the artistic features exist independently of the utilitarian aspects of the useful article? The Sixth Circuit determined that: Varsity's designs were two-dimensional works of graphic art; they have an intrinsic utilitarian function outside of merely portraying the appearance of clothing or conveying information; cheerleading uniforms have the intrinsic utilitarian function of covering the body, wicking away moisture, and withstanding the rigors of athletic movements; the designs are not inextricably intertwined with those utilitarian aspects; cheerleading outfits are still easily identified without any graphic design elements; a graphic design and a blank cheerleading uniform can appear side by side, and the arrangement of graphic elements can exist independently of the utilitarian aspects of the uniform.

Therefore, Varsity's graphic designs were a copyrightable subject matter in the same way that fabric designs are copyrightable although dress designs are not. A design that graphically sets forth the shape, style, cut and dimensions for converting fabric into a finished dress or other garment cannot be separated from the utilitarian aspects of clothing to cover, protect and warm the body. As Varsity's designs are more like fabric design than dress design, the Sixth Circuit granted summary judgment to Varsity on the issue of the protectability of its designs, and remanded the case for the District Court to decide whether the designs lacked originality or were otherwise ineligible for copyright protection. The Sixth Circuit also restored the state law claims.

Judge McKeague dissented, observing that although the majority presented a thoughtful approach to the “metaphysical quandary” courts have wrestled with for years, there was no conceptual separability of Varsity's designs from the cheerleading uniforms, where a reasonable observer would not associate a blank outfit with cheerleading. The dissent argued that Congress or the Supreme Court should clarify copyright law with respect to garment design because the law in that area “is a mess.”

Conclusion

Fashion designers have been struggling for years to obtain some kind of protection similar to the apparel design protection available in some European countries. Congress has not been able to pass such legislation. One failed attempt was the Innovative Design Protection and Piracy Act, which would have covered certain fashion design for three years. Congress can be expected to continue to struggle with this issue, which pits designers against retailers.

Judith Grubner is a partner in the IP Group of Arnstein & Lehr and a member of this newsletter's Board of Editors. She can be reached at [email protected].