The issue the Supreme Court has agreed to decide involves how to separate the artistic elements of a product’s design from the useful or “utilitarian” elements. That distinction matters for copyright purposes, because to copyright an artistic element, it must be “separable” from the “utilitarian” aspects of the product. In this case, the products are cheerleading uniforms, and the copyrighted designs are the patterns of stripes, chevrons, and zigzags used on the uniforms. The Supreme Court will consider whether the Copyright Office was wrong to grant those designs a copyright registration.
Varsity Brands and related entities brought this case against Star Athletica to enforce its copyrights in the uniform designs. The district court ruled that Varsity’s copyrights were invalid because the designs were not separable from the uniforms themselves.
In a divided panel decision, the Sixth Circuit held that the designs on the cheerleading uniforms were copyrightable subject matter under 17 U.S.C § 101. The Sixth Circuit focused its analysis on the test for conceptually separating the design of an article from the elements that make it useful. The design of a useful article may be deemed copyrightable if pictorial, graphic, or sculptural elements of the article are separable from what makes the article useful. Such separability can either be physical, that is, physically separating those elements from the article without affecting its utility, or conceptual. In fact, the Sixth Circuit held that the Copyright Act protects the pictorial, graphic or sculptural features of a design of a useful article even if those features cannot be physically separated, as long as they are conceptually separable. Various approaches to conceptual separability have been adopted by courts and suggested by academics. The Sixth Circuit adopted its own five-step approach, as follows:
- 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?
- 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?
In applying its test to the copyrights at issue, the Sixth Circuit found that the arrangement of stripes, chevrons, colorblocks, and zigzags existed independently from the uniform’s functions of covering the body, wicking away moisture and withstanding the rigors of athletic movement. The majority opinion rejected the argument that the utilitarian aspect of the uniforms were to convey to others that the wearer of the uniform is a cheerleader of a particular team. The court therefore held Varsity’s designs were copyrightable subject matter under § 101 of the Copyright Act.
Judge McKeague dissented. He would have held the designs not copyrightable, and he called for clarification from Congress or the Supreme Court with regards to the test for copyright eligibility in the field of garment design.
Star asked the Supreme Court to review the case. The Supreme Court agreed to consider one of the questions Star presented: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”
Varsity Brands, Inc. is represented by Goodwin Procter LLP at the Supreme Court stage of this matter.