Give me a C! Give me an O! Give me the rest of the letters that make up copyright, I have a word limit on these articles. The Supreme Court has recently agreed to hear the case of Star Athletica v. Varsity Brands. This case deals with one of the most divisive issues in law today, an issue that has confused courts across the U.S. for decades. This case deals with cheerleading uniforms.
This seems like a joke at first glance, and it is to a degree. When one thinks of landmark Supreme Court cases, cheerleaders certainly don’t come to mind. Supreme Court cases have dealt with issues like reproductive rights and segregation. However, while Varsity Brands does not deal with issues so crucial to the lives of so many, these cheerleading uniforms do involve a legal doctrine which has split courts across the nation—a concept of copyright law known as separability.
Copyright law does not provide protection to useful articles, such as clothing. Instead, this is left to patent protection. A useful article is defined as “an object having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” This means that copyright doesn’t protect something that has a use beyond aesthetics.
The Copyright Office provides several examples of useful articles, the most relevant of these to the Varsity Brands case is clothing. This has made it very difficult to get copyright protection on anything dealing with clothing. However, like almost everything in law, this restriction has an exception—separability.
Separability is an exception that applies to pictorial, graphic, or sculptural (PGS) works. PGS works include, among other things, “two-dimensional and three-dimensional works of fine, graphic, and applied art.” Useful PGS articles, such as clothing, can be protected by copyright—at least in part—where the creative parts of the work can be sufficiently separated from the useful bits. There are two types of separability, physical and conceptual separability.
Physical separability is exactly what it sounds like, situations where the artistic elements of a work can be physically separated from the useful aspects. For instance, where a jacket has a patch sewn onto it, the patch is likely physically separable. This analysis, on its own, leads to an odd situation where two virtually identical works would receive different degrees of protection based on small differences in design.
Conceptual separability, on the other hand, exists where a work’s useful aspects are conceptually separable from its creative aspects. That is, the design is made with no consideration of utility.
Many courts have ruled that clothing is simply not separable, finding that all fashion design is influenced by the requirements of clothing the body. Decorative sequins on prom dresses have been ruled useful as they are part of the function of a prom dress to be “a garment specifically meant to cover the body in an attractive way for a special occasion.” Courts have treated casino uniforms the same way.
The 6th Circuit Does the Splits
Star Athletica v. Varsity Brands involves two manufacturers of cheerleading uniforms. Varsity Brands sued Star Athletica alleging that they had infringed their copyrights in several designs for cheerleading uniforms. Star Athletica responded by saying that Varsity Brand’s copyrights were invalid because their cheerleading uniforms are useful articles and the designs are not separable. The District Court, perhaps not surprisingly given past treatment of clothing, ruled the designs ineligible for copyright protection.
Varsity Brands appealed this ruling and the 6th Circuit, faced with a huge split in treatment between the Circuit Courts and nine tests to choose between, decided to make its own test. The 6th Circuit’s new test for conceptual separability is fairly well considered, a mish-mash of the Court’s favorite parts of the other nine tests.
The 6th Circuit’s test requires the court using it to ask five questions:
- Is the design a PGS work?
- If yes, is it a design of a useful article?
- What are the utilitarian aspects of the useful article?
- Can the viewer of the design identify the creative features of the PGS separately from the utilitarian aspects of the useful article?
- Can creative aspects of the useful article exist without the utilitarian aspects of the useful article?
The first two questions are simple, if the work isn’t a useful PGS, then there’s no need to apply the test in the first place. The third step requires the court to determine exactly what the useful function of the work in question is. For example, a chair’s useful function would be providing a place to sit. The fourth question asks if removing the creative elements from the rest of the work would affect the utility of the thing taken as whole. To use the chair example, a design painted on the wood of the seat could be considered separately from the utility of the chair because it could be removed with no effect of the ability of the chair to provide a place to sit. Finally, the test asks if the creative aspects of the work could exist as a work of art independent from the useful article. With the chair, you could take the design on the seat of the chair, print it out, and hang it like a painting.
In applying this test to the designs on Varsity Brands’ cheerleading uniforms, the 6th Circuit ruled the chevrons and zigzags on the uniforms to be conceptually separable. The court decided that uniforms were indeed useful works of 3D art. Their utility was to cover the body, wick away moisture, and withstand the rigors of athletic movements.
The court explicitly rejected the argument that the uniforms had the function of identifying the wearer as a cheerleader. Identifying a wearer is simply another way of conveying information. A blank cheerleading uniform would withstand the rigors of athletic movement as well as a decorated one and those same designs could be protectable if the same design was used as a painting.
The Supreme Court Makes Varsity: Resolving the Confusion
The 6th Circuit’s test, likely the most straightforward of all ten separability tests, still has all the elements to be just as confusing in application as its nine predecessors. Thankfully, the Supreme Court will have a chance to resolve this confusion by providing one test to rule them all.
Star Athletica has asked the Supreme Court to consider this case and the Supreme Court has agreed. Soon, they will decide the appropriate test to determine whether a useful article can be protected by copyright. This is a question that many, especially the fashion industry, will be salivating for an answer to. Depending on what the Supreme Court says they could not only clarify decades of confusion—they could allow for copyright protection on things many thought incapable of receiving it.
Authored by Jonathan Lurie, LegalMatch Legal Writer and Attorney at Law