The Supreme Court agreed to review the Sixth Circuit’s decision in Varsity Brands, Inc. v. Star Athletica, LLC and weigh in on a question that has been troubling courts for decades: what is the test for determining when a design of a useful article is protectable under Section 101 of the Copyright Act? In Varsity Brands, the Sixth Circuit was tasked to decide whether the stripes, chevrons, and color blocking designs on cheerleading uniforms were separable from the utility of the uniform itself and, thus, copyrightable under the Copyright Act.
The answer to this question is no easy task. As the Sixth Circuit acknowledged, courts “have struggled mightily to formulate a test.” After noting the issue is ripe for Supreme Court or Congressional review, the dissent wrote, “[t]he law in this area is a mess – and it has been for a long time.”
History of Copyright Protection for Designs of Useful Articles
Section 101 of the Copyright Act defines a “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” While useful articles such as clothing are not subject to protection under the Copyright Act, Section 101 does provide protection for “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” For example, a copyrightable feature of a useful article may include “a drawing on the surface of wallpaper” or “a carving on the back of a chair.”
This is not the first time the Supreme Court has had to draw the line between protectable and unprotectable features of useful articles. In Mazer v. Stein, the Supreme Court held that a lamp base was copyrightable even though a lamp is a useful article. In upholding the validity of the registration at issue and ratifying the Copyright Office’s regulation providing protection for such works, the Court said, “we find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.” Thus, the lamp base, which consisted of a dancing figurine, was copyrightable, but the utilitarian aspects of the lamp like the configuration of the sockets and wiring were not copyrightable.
Following Mazer, the Copyright Office adopted another regulation in attempt to clarify the boundaries between designs and utilitarian aspects of useful articles, which mirrors the language of Section 101. Yet the question remains on when a design can be “identified separately from” and is “capable of existing independently of” the utilitarian aspects of useful articles.
A Closer Look at Varsity Brands, Inc. v. Star Athletica LLC
Varsity is the leading manufacturer and distributor of cheerleading uniforms. After its designs are drawn in house, the designs are sewn, embroidered, infused, or printed on the uniform. To protect its designs, Varsity obtained copyright registrations, five of which are at issue in this case.
When Star Athletica entered the market and advertised competing uniform designs, Varsity sued for copyright infringement, among other claims. In reviewing cross-motions for summary judgment, the district court held that Varsity’s designs are not copyrightable. Because a cheerleading uniform “without team colors, stripes, chevrons, and similar designs… is not recognizable as a cheerleading uniform,” the court held that Varsity’s designs are not physically or conceptually separable from the function of the uniform, which is “to clothe the body in a way that evokes the concept of cheerleading.”
On appeal, the Sixth Circuit reversed the district court’s decision and held that Varsity’s designs are copyrightable. In a split decision, the majority reviewed at least nine different tests for separability and ultimately created its own “hybrid” approach. While the dissent agreed with the majority’s general approach, the dissent disagreed on the outcome, noting that the “case turns on how function is defined.” Unlike the dissent’s view of function, the majority said the function of a cheerleading uniform is to “cover the body, permit free movement, and wick away moisture.” In the majority’s view, the designs do not merge with the function of the uniform. Instead, the evidence suggests that the designs are separate from and independent of the uniform itself because they are unnecessary to the uniform’s function and transferrable to other types of articles.
Notably, the Sixth Circuit did not address whether Varsity’s designs are original. This seems to leave the door open for another way to attack Varsity’s registrations. Nevertheless, it is now up to the Supreme Court to provide some much needed clarity on the test for separability under Section 101.