United States: Give Me An E: Cheerleading Uniform Designs Eligible For Copyright Protection

In a 6–2 decision authored by Justice Thomas, the Supreme Court of the United States provided guidance as to whether aesthetic designs of a cheerleading uniform, such as stripes, chevrons, zigzags and color blocks, are eligible for copyright protection. In doing so, the Supreme Court affirmed the decision of the US Court of Appeals for the Sixth Circuit that aesthetic designs of a cheerleading uniform are "separable" from the purpose of the uniform. Star Athletica, L.L.C. v. Varsity Brands, Inc., Case No. 15-866 (Supr. Ct., Mar. 22, 2017) (Thomas, Justice) (Ginsburg, Justice, concurring) (Breyer, Justice, joined by Kennedy, Justice, dissenting).

Background  

Under the Copyright Act of 1976, the design of "useful articles" (i.e., articles having "an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information") is copyrightable "only if, and only to the extent that, such design incorporates . . . graphic . . . features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 USC §§ 101, 102. Copyright protection for original works of art does not extend to industrial or utilitarian designs.

The case involved cheerleader uniforms designed by Varsity Brands and later copied by Star Athletica. After Varsity sued Star for infringing Varsity's registered copyrights on its cheerleading uniform designs, the district court dismissed the case on summary judgment, concluding that the aesthetic features of the uniform had merged with the functional or utilitarian purpose of the uniform, which is to identify the wearer as a cheerleader. In other words, the aesthetic features could not be "physically or conceptually" separated under § 101. 

The Sixth Circuit reversed, finding that while the uniforms did have an "intrinsic utilitarian function," namely to "cover the body, wick away moisture, and withstand the rigors of athletic movements," the aesthetic graphics (e.g., zigzags and chevrons) did not enhance the functionality of the uniform since the wearer can still cheer, jump, kick and flip without those aesthetic features. Rather, the aesthetic features were "separately identifiable" and could exist independently since the graphics could be transferred onto other types of garments ( IP Update, Vol. 18, No. 9).

The Sixth Circuit panel was split, however, with the dissent arguing that the case should turn on how "function" is defined (i.e., in terms of the decorations in issue), which would determine whether the designs were copyrightable.

The Supreme Court granted certiorari to consider the question: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act? ( IP Update, Vol. 19, No. 5)

The Supreme Court Decision

As Justice Thomas explained, the Supreme Court was "task[ed] to determine whether the arrangements of lines, chevrons, and colorful shapes appearing on the surface of respondents' cheerleading uniforms are eligible for copyright protection as separable features of the design of those cheerleading uniforms."

As an initial matter, the Supreme Court rejected Varsity's argument that a "separability analysis" was even necessary in this case because the aesthetic features or "surface decorations" are "two dimensional graphic designs that appear on useful articles" but are not themselves designs of useful articles. Varsity argued that they are protected two-dimensional works of graphic art without regard to any separability analysis under § 101 because the two-dimensional features on the surface of the useful article (i.e., clothing) are "inherently separable." The United States, in its amicus brief, also argued that a separability analysis was unnecessary in light of the fact that Varsity had valid copyrights in the features and "simply reproduced those copyright works on the surface" of the cheerleading uniform—which Varsity had the exclusive right to do under the Copyright Act. But the Supreme Court found this argument inconsistent with the Copyright Act, which requires "separability analysis for any 'pictorial, graphic, or sculptural features' incorporated into the 'design of a useful article.'"

In terms of separability, the Supreme Court made clear that the "controlling principle in this case" depends "solely on statutory interpretation." The Supreme Court considered § 101 in terms of "the provisions of the whole law" which informs its meaning. Section 101 provides a two-prong test to determine eligibility of a "pictorial, graphic, or sculptural featur[e]" incorporated into the "design of a useful article": whether the aesthetic feature "can be identified separately from" and is "capable of existing independently of the utilitarian aspects of the article." As explained by the Supreme Court, the first requirement (separate identification) is not onerous: a useful article meets the first prong if one is able to look at the useful article and spot some two- or three-dimensional elements that appear to have pictorial, graphic or sculptural qualities. The second requirement (independent-existence requirement) is more difficult. "The decision maker must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article." If the feature is not capable of existing as a pictorial, graphic or sculptural work once separated from the useful article, then it was not an aesthetic feature but rather a utilitarian feature of the article.

The Supreme Court found support for its interpretation in its precedent (Mazer) as well as §§ 106(a) and 113(a) of the Copyright Act, as both provisions make clear that copyright protection extends to articles "regardless of whether they were created as free-standing art or as features of useful articles." The "ultimate separability question," the Court states, "is whether the feature for which copyright protection is claimed would have been eligible for copyright protection as a pictorial, graphic, or sculptural work had it originally been fixed in some tangible medium other than a useful article before being applied to a useful article."

Applying this test to cheerleading uniforms, the Court held that the stripes, chevrons, zigzags and color blocks are separable from the uniform and eligible for copyright protection because (1) they are features with pictorial, graphic or sculptural qualities, and (2) they would qualify as "two-dimensional" works of art under § 101 if they were separated from the uniform and applied to another medium. As the Court noted, removing the decorations to another medium would not "replicate the uniform itself."

Concurrence and Dissent

Justice Ginsburg filed a concurrence, agreeing with the result but stating that engaging in a separability test was unwarranted because the designs are not designs of useful articles but are copyrightable stand-alone pictorial and graphic works that Varsity reproduced on useful articles (i.e., on cheerleading uniforms). Moreover, having gained copyright protection on its designs, Varsity had the exclusive right to reproduce the designs on such useful articles.

Justice Breyer filed a dissent in which Justice Kennedy joined, challenging the second prong of the test. Justice Breyer's main argument was that even if the decorations from the uniform were removed from the uniform and placed on another medium (e.g., a canvas), they would still "create 'pictures of cheerleader uniforms.'" Such designs "necessarily bring along the underlying utilitarian object" and thus "each design is not conceptually separable from the physical useful object." In other words, the design features that Varsity seeks to protect are not "capable of existing independently o[f] the utilitarian aspects of the article."

Practice Note: Although the Supreme Court's decision focuses on the ubiquitous and well-known designs on cheerleading uniforms, the impact of the Court's decision will be exciting to watch in terms of designer knock-off entities and 3D printing.

Give Me An E: Cheerleading Uniform Designs Eligible For Copyright Protection

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