When should a feature of a useful article be protected under § 101 of the Copyright Act?
This case may have deep repercussions for the fashion industry, since it asks the Supreme Court to clarify garment design copyrightability by determining when a useful article’s design feature is protectable under § 101 of the Copyright Act. A useful article, such as garment design, cannot be copyrighted, but features of it may be copyrighted. The case law is muddled as to when features are copyrightable. Star Athletica, LLC advocates for a two-part test to determine copyrightability. First, a feature must be identified separately from the useful article’s utilitarian aspects. Second, the utilitarian aspects and the feature must be able to exist side-by-side, as fully realized, separate works—one as an artistic work and the other as a useful article. In opposition, Varsity Brands, Inc. et al. contends that Star Athletica mixes and matches various lower court approaches to create a confusing test without statutory support. Instead, Varsity argues that features of a useful article are copyrightable if they are “applied art,” or artwork that appears on a useful article.
Questions as Framed for the Court by the Parties
What is the appropriate test to determine when a feature of the design of a useful article is protectable under § 101 of the Copyright Act?
Varsity Brands, Inc. et al. (“Varsity”) designs and manufactures cheerleading uniforms and accessories. Star Athletica, LLC v. Varsity Brands, Inc., No. 14-5237 at *2 (6th Cir., filed Aug. 19, 2015). Varsity’s designers first create “design concepts,” which illustrate and arrange different patterns of chevrons, stripes, and other shapes (design features); the designers do not consider the uniform’s functionality or production. Id. If the design is selected, Varsity’s production crew uses the design to create a cheerleading uniform through one of four techniques: “cutting and sewing panels of fabric and braid together; sublimation; embroidery; or screen painting.” Id. at *3 (internal quotations omitted). These uniforms are then advertised in catalogs and online, and customers choose a design concept and customize the uniforms they order. Id. Varsity has copyrighted some of its design features as “two-dimensional artwork,” including five design features that are at issue here. See id. at *3–5.
Star Athletica, LLC (“Star Athletica”) also sells athletic uniforms and accessories, including cheerleading uniforms. Id. at 5. Varsity believes that several of Star Athletica’s advertised cheerleading uniforms are similar to their copyrighted designs and brought suit against Star Athletica. See id.
Varsity alleges five claims of copyright infringement in violation of the Copyright Act, 17 U.S.C. § 101 et seq. Id. at 5–6. Varsity also brought trademark claims and Tennessee state law claims, including “unfair competition, inducement of breach of contract, inducement of breach of fiduciary duty, and civil conspiracy.” Star Athletica, LLC v. Varsity Brands, Inc., No. 10-2508 at *17 (W.D. Tenn., filed March 1, 2014); Star Athletica, LLC v. Varsity Brands, Inc., No. 14-5237 at *6. In response, Star Athletica asserted a counterclaim alleging that Varsity had made fraudulent representations in their filings to the Copyright Office. Id.
Both parties cross-filed for summary judgment. Id. As Varsity did not oppose Star Athletica’s motion for summary judgment on the trademark claim, the court granted partial summary judgment in favor of Star Athletica. Star Athletica, LLC v. Varsity Brands, Inc., No. 10-2508 at *17. The court also granted partial summary judgment in favor of Star Athletica on Varsity’s copyright claims, finding that the design features in question could not be separated from the utilitarian aspects of a cheerleading uniform, and thus were not protectable under copyright law. Star Athletica, LLC v. Varsity Brands, Inc., No. 14-5237 at *6–7. The court found that the design features on the uniforms indicated that the garment was a cheerleading uniform and performed a utilitarian function. Id. at 7. Finally, the district court declined to exercise supplemental jurisdiction and dismissed the state law claims without prejudice. Id.
Varsity then appealed this decision to the Sixth Circuit. The Sixth Circuit concluded that Varsity’s design features could be separated from the utility of the uniforms, so they were protected “as pictorial, graphic, or sculptural works.” Id. at 30. The case was remanded to the district court for further proceedings. Id. at 32. On May 2, 2016, the U.S. Supreme Court granted certiorari.
WHAT IS THE CORRECT APPROACH TO DETERMINE WHETHER A DESIGN IS A PROTECTABLE PICTORIAL, GRAPHIC, OR SCULPTURAL WORK SEPARABLE FROM THE UTILITARIAN ASPECTS OF THE ARTICLE?
Congress 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.” See Brief for Petitioner, Star Athletica, LLC at 29; Brief for Respondents, Varsity Brands, Inc. et al. at 8. Both Star Athletica and Varsity agree that copyright law protects parts of the design of a “useful article” as original “pictorial, graphic, and sculptural works” if the design incorporates design features that are capable of being identified separately from and can exist independently of the article’s “utilitarian” features. See Brief for Petitioner at 26; Brief for Respondents at 21.
Star Athletica proposes a new, two-part test to determine if an article’s design features may be copyrighted. See Brief for Petitioner at 31–32. First, Star Athletica argues that the article’s design feature must be able to be identified separately from its utilitarian aspects. Id. at 30–31. This “identified separately” test questions whether an article’s design feature is artistic, utilitarian, or both: if an article’s design feature is solely artistic, it can be copyrighted; if the design feature is even slightly utilitarian or both utilitarian and artistic, it cannot be copyrighted. Id. at 31. Recognizing that the “identified-separately” test may not be determinative in many cases, Star Athletica then advocates for a second inquiry—the “independent-existence” test. See id. at 32–33. Under this second inquiry, the design feature and the utilitarian article must be able to exist side-by-side as fully realized, separate works. Id. at 33. Again, Star Athletica argues that only a solely artistic design feature would be protectable. Id. Star Athletica notes three distinct approaches courts and the Copyright Office have used to assist with this “independently-existence” analysis; the approaches include considering (1) whether the design feature could be physically removed without altering the utilitarian aspects of the article (“physical separability” approach), (2) whether the designer intended to produce a useful design feature (“design process” approach), and (3) whether the design feature would still be marketable to some significant segment of the community without its utilitarian function (“marketability” approach). See id. at 33–36. Star Athletica further added that, in a close case, a court should err on the side of not extending copyright protection for a useful article. Id. at 36.
In response, Varsity argues that Star Athletica mixes and matches various lower court approaches to create a new, multi-part test that would “merely sow confusion.” See Brief for Respondents at 33. First, Varsity argues that Star Athletica’s sharp distinction between artistic design features and utilitarian features is fundamentally inconsistent with the Copyright Act’s protection of “applied art,” which, by definition, has both artistic and “practical, utilitarian elements.” Id. at 34. Varsity further notes that the Copyright Office should not have to “play the role of art theorist” that would be required of it to distinctly separate aesthetics and utility. See id. at 35. Varsity also takes issue with Star Athletica’s “independent-existence” inquiry. See id. Varsity argues that each of the three conceptual-separability approaches advocated by Star Athletica is inconsistent with the Copyright Act’s text, history, and purpose. See id. at 35. For example, Varsity argues that the “design-process” approach depends on the designer’s state of mind and thus could produce inconsistent results—clearly not what Congress intended. See id. at 36–37. Similarly, Varsity notes that the marketability approach has drawn heavy criticism for, among other reasons, privileging “popular art” over more unfamiliar art forms. See id. at 38–40. Lastly, Varsity argues that nothing in the text, structure, or history of the Copyright Act supports a “presumption” against separability, as Star Athletica argues. Id. at 45–46.
CAN VARSITY’S DESIGN FEATURES BE SEPARATED FROM THE UNIFORM’S UTILITARIAN ASPECTS?
Star Athletica notes a cheerleader uniform has a number of inherently utilitarian functions, such as identifying that the wearer is a cheerleader and member of a particular team. Brief for Petitioner at 45. Thus, a cheerleader uniform fails the “identified-separately” requirement because the uniform’s stripes, chevrons, zigzags, and color blocks cannot be recognized apart from a cheerleader uniform’s utilitarian aspects but are essential to the uniform’s use or purpose. See id. at 46. What’s more, Star Athletica notes, the Copyright Office initially rejected many of Varsity’s cheerleading uniform designs. Id. at 15.
Although Varsity argues that its designs are copyrightable without any need for separability analysis, it contends that even under separability analysis, the design features are easily separable from the utilitarian aspects of cheerleading uniforms—wicking away moisture and permitting the wearer to “cheer, jump, kick, and flip”—and therefore are copyright-eligible. See Brief for Respondents at 52–53. Varsity maintains that a design that merely provides identification or “portraying appearance,” such as conveying that a person is a cheerleader, is not a utilitarian function. Id. at 43. Varsity argues that cheerleading uniforms can exist without any designs on their surfaces and, thus, its designs satisfy the Copyright Office’s test because the design and the utilitarian article on which they appear (cheerleading uniforms) can exist side-by-side. See id. at 54. Varsity further argues that its designs are clearly separately identifiable from and capable of existing independently of the utilitarian aspects of cheerleading uniforms because the designs have been reproduced on other garments such as warm-ups and jackets. See id. at 18. Varsity asserts that the particular design does not affect the garment itself, whatever it may be, because the garment has a “standard base” that does not vary with the design placed on it—thus further supporting the separability of the garment’s design and utilitarian functions. See id. at 10.
ARE VARSITY’S DESIGN FEATURES COPYRIGHTABLE AS A MATTER OF LAW?
Star Athletica posits Varsity’s garment design features are not copyrightable as a matter of law. Brief for Petitioner at 44. Star Athletica argues that the courts should defer to Congress’s longstanding rule that garment designs cannot be copyrighted because they are useful articles and extend this rule to garment design features. See id. at 10. Star Athletica notes not only the purpose of the Copyright Clause to encourage the development of artistic works but also Congress’s continued refusal to expand protection of useful articles designs, including garments designs. See id. at 22–26. Thus, Star Athletica argues, courts are properly reluctant “to expand the protections afforded by the copyright without explicit legislative guidance.” See id. at 29. Star posits this reluctance extends to any feature normally incorporated into the garment—such as the stripes, chevrons, or zigzags at issue here—unless a particular feature is sufficiently separable from the garment’s utilitarian function. See id. at 44–45.
In response, Varsity argues that as a threshold matter, its graphic designs are two-dimensional graphic designs that appear on useful articles, rather than designs of useful articles, and so can be copyrighted as “applied art.” See Brief for Respondents at 52. Varsity maintains that the Copyright Office consistently registers two-dimensional artwork that appeared on the surface of useful articles, such as “[a]rtwork printed on a t-shirt, beach towel, or carpet.” Id. at 5–9. Thus, while copyright laws usually do not protect the overall design of a garment, “the fashioning of … fabric into an article of clothing” does not “cancel out the copyright of the design imprinted thereon.” Id. at 29.
WHETHER EXPANDING COPYRIGHT PROTECTION WOULD NEGATIVELY IMPACT MARKET COMPETITION
Public Knowledge et al. argue in support of Star Athletica that copyrighting a useful article’s design features without a stringent inquiry into separability will stifle individual creativity. See Brief of Amici Curiae Public Knowledge et al., in Support of Petitioners at 16–17. Public Knowledge contends that individual consumers depend upon their ability to take existing products and adapt them. Id. at 10. It suggests that stricter copyright protection for useful articles will dampen this creative energy and consequently have a negative effect on the economy. See id. at 16–17. Public Knowledge also claims that although maintaining current copyright limitations will advance market competition, extending copyright protections will not provide any benefits. See id. at 22–23. In support, it notes that the fashion industry has been fine thus far without extended garment design feature protection, and in fact demonstrates a “pirate paradox,” where rampant copying facilitated creativity. See id. at 23–25. Public Knowledge also points to other industries that have flourished without broad copyright protection, such as the cuisine and comedy industries. See id. at 23–29. Finally, Public Knowledge references research indicating that heightened copyright protection does not benefit certain industries. See id. at 29–33. Furthermore, two law school professors, Professors Christopher Buccafusco and Jeanne Fromer, argue that allowing Varsity to copyright these designs will work against competition by allowing Varsity to create a monopoly. See Brief of Amici Curiae Professors Christopher Buccafusco and Jeanne Fromer, in Support of Petitioners at 28. The professors contend that here, where the design features also identify the wearer, other designers will not be able to achieve the same effect without violating copyright law; in essence, only Varsity will be able to create cheerleader uniforms. See id. at 28–29.
In response, The Council of Fashion Designers in America, Inc. (“CFDA”) contends that despite the amici’s arguments, broader copyright protection is necessary for the fashion industry to grow. See Brief of Amicus Curiae Council of Fashion Designers of America (“CDFA”), in Support of Respondents at 5–9. CFDA argues that advancing technology has allowed people to copy fashion designs at a higher rate and with reduced costs. See id. at 5. As a result, the copyists can cut all of the costs that emerging designers often need to put into their business. See id. at 6–9. CFDA maintains that these factors may contribute to a decrease in fashion innovation. See id. at 5. The Fashion Law Institute adds to this argument by asserting that many other countries with successful fashion industries throughout the world have greater copyright protections. See Brief of Amici Curiae Fashion Law Institute et al., in Support of Respondents at 18. The Institute contends that the structure in the United States incentivizes companies to reduce their own risk within the business by copying the work of others that has already been proven successful, rather than innovate. See id. at 18–19. Finally, the United States argues that holding for Varsity and expanding copyright protection will not result in an exclusive monopoly for Varsity. See Brief of Amicus Curiae the United States, in Support of Respondents at 38. Rather, the United States contends that not all design features fulfill the creativity requirement of copyright protection: copyright protects only expression and not ideas, so if a protected design was truly the only way to create cheerleading uniforms, copying would be allowed. See id. at 38–40.
THE EFFECT OF STAR ATHLETICA’S PROPOSED TEST ON COPYRIGHT LAW
Star Athletica advocates for a new separability test. Brief for Petitioner, Star Athletica, LLC at 38. Although Star admits that this new proposal will be “sub-optimal,” Star Athletica suggests this test is an improvement over the alternatives, arguing that the other approaches are “vague, difficult to apply,” or consider subjective intent, amongst other problems. See id. at 39, 42. Star Athletica contends that its proposed test will bring cohesion to copyright law by combining several existing tests into one comprehensive framework. See id. at 38. Further, Star Athletica argues that its test follows the Supreme Court’s previous advice that caution should be exercised in this field in order to protect against monopolies. See id. at 44. Star Athletica asserts that if greater protection is to be afforded to garment design features, it must be done through the legislature, rather than through the courts. See id.
In response, the United States argues that Star Athletica’s new test will lead to inconsistencies that would undermine the copyright process. Brief of the United States at 36. In support, the United States contends that Congress did not intend to consider certain factors included within the Star Athletica test, such as an item’s design process and marketability, and that their inclusion would work against the Copyright Act’s registration scheme. See id. at 36–37. The United States further argues that the inclusion of these two external elements would make the process burdensome and lead to overly extensive discovery in copyright litigation. See id. at 36–38.
- Amanda Ciccatelli, Star Athletica, LLC vs. Varsity Brands Case Continues to Spark Fashion Law Controversy, InsideCounsel Magazine (May 18, 2016).
- Daniel Fisher, Supreme Court Dives Into Copyright Fight Over Cheerleader Uniforms, Forbes (May 2, 2016).