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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Vedder, Price P.C.
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Vedder, Price P.C.
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions