Textile designs are generally copyrightable, but dress designs (the shape, cut and style of garments) are not. A textile design is viewed as a work of art, whereas the shape of an article of clothing is considered too intertwined with the utilitarian function of the garment to be copyrightable. Somewhere in between textile designs and dress designs lie the designs of useful articles, such as decorative elements of uniforms.
The Supreme Court today announced that it will hear Varsity Brands, Inc. v. Star Athletica LLC, a case that, according to Star’s lawyer, involves “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.”
Varsity Brands designs, manufactures and sells cheerleading apparel. Star Athletica is its competitor. In 2010, Varsity filed an infringement lawsuit, alleging that Star illegally copied the stripes, colors, chevrons and other ornamentation of its cheerleading uniforms. The district court found for Star, holding that cheerleading uniform designs are utilitarian and not severable from the garments’ function as uniforms. Varsity appealed. Last year, the Sixth Circuit reversed and found in favor of Varsity, holding that its designs could be separated from the utilitarian aspects of its uniforms.
The Sixth Circuit set forth five questions to consider in determining whether pictorial, graphic or sculptural features of a design are separable from the utilitarian aspects of the article. They are:
- 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?
Applying this test to Varsity Brands’ designs, the Court found that the designs at issue consisted of graphic works, and were also designs of useful articles – namely, “cheerleading uniforms and sportswear.”
The Court then addressed the severability of the designs from the utilitarian aspects of the cheerleading uniforms, and found that the designs themselves did not “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 noted that nothing prevented Varsity Brands’ from taking its designs, framing them, and hanging them on the wall as art.
It seems to this author that the Sixth Circuit reached the right result. Now, we wait for the final word from the SCOTUS, and a ruling on the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act.
