United States: Apparel Designs And The "Metaphysics" Of Copyright Protection

Last Updated: October 21 2014
Article by Robert C. Welsh

Varsity Brands, Inc. v. Star Athlectica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014)

Metaphysics is usually thought to be the province of philosophers or theologians.  A recent decision by a U.S. District Court in Tennessee, Varsity Brands, Inc. v. Star Athletica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014), reminds us that copyright law can also require courts to confront some pretty thorny metaphysical issues in distinguishing between copyrightable expression and non-copyrightable utilitarian designs.  As Professor Paul Goldstein has written, "[o]f the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectable pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design."

Section 101 of the Copyright Act frames the distinction between copyrightable and utilitarian works.  The Copyright Act defines "pictorial, graphic, and sculptural works" to include "two-dimension and three-dimensional works" but makes clear that copyright protection does not extend to "their mechanical or utilitarian aspects," and further states:

"the design of a useful article . . . shall be considered [protected by copyright] only if, and only to the extent that such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."  

The Copyright Act defines "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."

It is well-recognized that clothing possesses both utilitarian and aesthetic attributes: it serves the utilitarian function of shielding our bodies from the elements as well as contains original coloration and designs that responds to our purely aesthetic desires and sensibilities.  Hence, those elements of clothing design pertaining to shape, size, style, cut, and dimensions for converting fabric into a finished garment are not protected by copyright.  By contrast, designs imprinted on fabric can be subject to copyright protection.  Distinguishing between copyrightable aesthetic elements and utilitarian design elements has proved to be a difficult, controversial, and as it turns out, highly "metaphysical" task.

The "metaphysical" aspect derives from the two-fold "separateness" test that courts typically performed to determine whether a claimed copyrightable design feature may be separated from the utilitarian object in which it appears.  First, courts will inquire whether the claimed copyrighted work is physically separable from the utilitarian object such that it "can actually be removed from the original item and separately sold, without adversely impacting the article's functionality."  Chosum Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005).  A classic example of a copyrightable design that satisfies the physical separateness requirement is an ornament that is affixed to a belt buckle that could also be worn separately as a pin.  See Kielelstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980).  However, if the design elements are not physically separable, courts must conduct a second inquiry into whether the elements are "conceptually separable"—which has been interpreted to mean whether the court can conceive of the claimed copyrighted features as existing independently of the utilitarian features of the article.  As the recent Varsity Brands case illustrates, application of this test requires nothing less than a philosophic inquiry into the very nature of the utilitarian thing itself.

The Varsity Brands case grew out of a dispute between competing manufacturers of cheerleading uniforms, in which the defendant was accused of copying the plaintiff's copyrighted color and design elements on its competing cheerleading uniforms.  The defendant responded by contending it was free to use these design and color elements because they served the purely utilitarian function of identifying the product as a cheerleading uniform.  The plaintiff's color and design elements did not satisfy the "physical separation" test because they could not have been sold independently of the cheerleading uniform on which they were affixed.  Therefore, the viability of plaintiff's copyright claim hinged on whether its color and design elements were "conceptually separate" from the cheerleading uniform.  As the district court explained, making this determination required the court to first identify the essential elements of a cheerleader uniform—which the court referred to as "cheerleading-uniform-ness."  Id. at *1.  As the court framed the issue, plaintiff's copyright claim hinged on whether plaintiff's design and color elements were "at the core of the ideal—of 'cheerleading-uniform-ness,' . . . [such that they] cannot be conceptually separated from the utilitarian object itself" and therefore are not subject to copyright protection.  Id.

The plaintiff contended that its color and design elements were conceptually separable from the cheerleading uniforms themselves because its designers were allowed to come up with their own color and design creations without regard to the any utilitarian concerns regarding the realities of production.  In effect, the plaintiff took the view that the unadorned cheerleader uniform was like a blank canvas, and, like an artist's painting, everything that was added to the blank cheerleader uniform was necessarily copyrightable expression.

The district court disagreed.  According to the court, the pertinent question was not whether a separate utilitarian article of clothing remained once the color and design elements were conceptually removed.  Instead, the relevant inquiry was whether the article of clothing would still serve the utilitarian purpose of being a cheerleader uniform if all color and design elements were removed.   As the court explained, "the utilitarian function of a cheerleading uniform is not merely to clothe the body; it is to clothe the body in a way that evokes the concept of cheerleading."  Id. at *8.

The district court accepted the defendant's argument that, regardless of the particular design and color elements that are used, "a cheerleading uniform loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas."  Id.  Accordingly, the court concluded that the plaintiff's color and design elements were not copyrightable because they could not be conceptually separated from the utilitarian functions they served in identifying the plaintiff's product as a cheerleading uniform.   Id. At *9.  In short, because the essence of "cheerleading-uniform-ness" necessarily entails the appearance of some color and design elements, and given that the plaintiff's design elements could not be removed and sold separately, the plaintiff's designs could not be separated from the garment's utilitarian functions, which meant that the defendant was free to use the plaintiff's designs.

One may surely ask whether courts should be addressing such seeming non-legal issues as identifying the essential nature of things, such as cheerleading uniforms.  Unfortunately, regardless of whether they are suited to the task, the ambiguous way in which Congress has drawn the line between copyrightable expression and non-copyrightable utilitarian designs has left courts with little choice but to engage in such "metaphysical" inquiries.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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