U-P-D-A-T-E! On May 2, 2016, the U.S. Supreme Court granted certiorari to address the question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”. The answer to this question may have far-reaching implications for the retail and fashion industries – stay tuned for future u-p-d-a-t-e-s!
Originally published September 10, 2015
A recent decision from the Sixth Circuit highlights the ongoing significance of copyright law for the retail and garment industries. On August 19, 2015, the Sixth Circuit, in reversing the lower court’s decision, held that the “stripes, chevrons, zigzags, and colorblocks” on Varsity Brands’ cheerleading uniforms are protectable by copyright. In Varsity Brands et al v. Star Athletica, the Sixth Circuit dipped into the murky waters of copyright protection for fashion design, reiterating the need for greater legislative or judicial guidance when it comes to fashion design and copyright law. Nonetheless, the Court ultimately found, as other Circuits have, that “fabric design”, unlike “dress design”, is protectable.
At the district court level in Tennessee, Varsity Brands sued Star Athletica for infringing its registered copyrighted designs for cheerleader uniforms. On summary judgment, the district court determined that a cheerleading uniform cannot exist without the hallmark “stripes, chevrons, zigzags, and colorblocks,” and therefore found Varsity’s copyrights of such designs invalid as inseparable from the utilitarian aspect of a cheerleading uniform.
In a 2-1 decision, the Sixth Circuit reversed, holding Varsity’s design to be “copyrightable pictorial, graphic, or sculptural works.” The Court started with a determination that the Copyright Office is entitled to Skidmore deference in its decisions to issue copyrights. Then, after presenting a survey of approaches taken by various courts in determining whether “the design of a useful article [is] . . . conceptually separable from [its] utilitarian aspects” so as to be copyrightable, the Court cited the Copyright Act at 17 U.S.C. § 101 to find Varsity’s designs so separable, and therefore protected under U.S. Copyright law. The Court presented “a series of questions . . . grounded in the text of the Copyright Act” to guide its inquiry:
(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 — an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information?
(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?
17 U.S.C. §§ 101,102 (internal citations omitted).
In the end, the Court held the “the arrangement of stripes, chevrons, color blocks” copyrightable, finding the design “wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement, and wick moisture”—that is, the utilitarian characteristics of a cheerleading uniform. In doing so, the Court essentially likened Varsity’s designs to more traditional fabric designs that have long-enjoyed established copyright protection. Note that the Court issued no opinion on originality as the issue was not presented to the Court.
That the design of a cheerleading uniform is separable from the uniform’s utilitarian aspect was, however, aggressively dismissed in the dissenting opinion, where Judge McKeague maintained that the sole purpose of a cheerleading uniform design is to “to identify the wearer as a cheerleader,” rendering the design inseparable from the utilitarian aspect of the uniform. Judge McKeague was nonetheless sympathetic to the majority’s attempts to sort out the law, and noted that this issue gives rise to continued confusion within the fashion and garment industries. Further, he urged Congress and the Supreme Court to take action to clarify U.S. copyright law “with respect to garment design,” noting that both the courts and businesses are clamoring for such clarity.