United States: Give Me A ©! SCOTUS Takes On Zigzags And Cheerleading Uniforms

This October, as the leaves begin to fall, and football season swings into gear, the U.S. Supreme Court will take on questions that are fundamental to the availability of copyright protection, and vital to the future of fashion. Having stood—and jumped—on the sidelines for decades, cheerleading moves to center stage, looking to the current team of Justices to referee whether chevrons, zigzags and color blocks are utilitarian elements of cheerleaders' uniforms not eligible for copyright protection, or instead could be conceptually separable, proprietary graphic designs sufficient to satisfy copyright registration requirements. Depending on which team's view scores with the Justices, Star Athletica v. Varsity Brands could either significantly expand the field of fashion elements outside the ambit of copyright protection, or reaffirm upon review that an original work of authorship does not lose its copyrightability merely because it's affixed to a wearable item.

History of the Useful Article Doctrine

The useful article doctrine at the crux of Varsity traces its origins to Mazer v. Stein, 347 U.S. 201 (1954), in which the Supreme Court considered the availability of copyright protection for dancing figurines comprising the base of a lamp. Focusing on the lamp's ornamental elements, the Mazer court held that artistic features (e.g., figurines) of a useful article (e.g., a lamp) that are capable of "separate and independent existence" are protectable by copyright. The issue of "utility" was thereafter incorporated into the Copyright Act of 1976, which recognizes "pictorial, graphic, and sculptural works" as categories of authorship eligible for copyright protection, though includes in their definition the limitation that "the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work 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." 17 U.S.C. §101 (emphasis added). Section 101 of the Act goes on to state that a "useful article" is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."

The apparent simplicity of the above definitions has nonetheless led courts analyzing functional items with ornamental features to highly inconsistent results. On the one hand, it is widely accepted that physical separability is not required, and conceptual separability could suffice to meet the copyright threshold. See, e.g., Kieselstein-Cord v. Accessories by Pearl, 632 F.2d 989 (2d Cir. 1980). However, courts have failed to provide clear guidance for determining whether an aspect of a work is "utilitarian" for purposes of copyright exclusion. Courts have also extensively diverged in their analytical methodology, resulting in uncertainty about what test will be used in any given case, and how such test(s) will be applied.

Consider the context of fashion. At its most basic, the "function" of clothing is to protect the wearer's body. On this reasoning, copyright protection for shapes of pockets to hold certain items, or cuts of pants to fit different body shapes, would be routinely denied. Less literally, the concept of "function" has been extended to, and copyright protection has consequently been denied for, elements of a uniform that identify the wearer as a casino worker. See Galiano v. Harrah's Operating Co., 416 F.3d 411 (5th Cir. 2005). The aesthetic appeal of a prom dress bearing an arrangement of sequins, a waistband and tulles was also deemed utilitarian, such that it served "to cover the body in a particularly attractive way for that special occasion." Jovani Fashion, Ltd. v. Fiesta Fashions, 2012 U.S. App. LEXIS 21245 (2d Cir. Oct. 15, 2012). Function itself, a seemingly concrete determination, has been interpreted as highly variable. The purpose of an element in some instances is narrowly construed, while in others is broadly perceived.

Zigzags and Color: Useful or Design?

The facts in the Varsity case taken up by the court are unremarkable. Varsity, a designer-manufacturer of cheerleading uniforms, secured copyright registrations covering several two-dimensional graphic designs imprinted on, or woven into, the uniform's fabric. Varsity alleged Star copied Varsity's designs, and Star denied copyright infringement on the reasoning that the designs were utilitarian, and therefore not copyrightable subject matter. The lower court agreed with Star that the designs were integral to the functionality of the uniform, because "without team colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular," the garment "is not recognizable as a cheerleading uniform." Varsity Brands v. Star Athletica, 2014 WL 819422 at *8 (W.D. Tenn. March 1, 2014). The Sixth Circuit reversed, refusing to find that identifying a cheerleader as a member of a team was a utilitarian aspect of a cheerleading uniform, and rejecting that a work's "decorative function" renders it unable to be identified separately from its utilitarian aspects. Varsity Brands v. Star Athletica, 799 F.3d 468, 490-92 (6th Cir. 2015). The Supreme Court granted cert, and several amicus curia were filed requesting clarity on the fundamental question of separability, as well as the test used to determine its implications.

What This All Means and Why It Matters

In a case about uniforms, it seems fitting to request uniformity. Adherence to multiple analyses that render disparate results institutionalizes uncertainty, and encourages the proliferation of industries aimed to exploit it. Such lack of legal clarity has practical effects, particularly for the fashion industry, whose works often straddle numerous IP protections but may not fit squarely in any. Under any test, if the chevrons, zigzags and color blocks in Varsity would be copyrightable as a printed graphic, they should not lose their protection because they're applied to a cheerleading dress. A challenge on the basis of originality remains available.

Originally published by New York Law Journal, September 12, 2016.

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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