In a significant decision, on August 19th, the Sixth Circuit in
Varsity Brands v. Star Athletica reversed the WD
Tenn.'s widely criticized decision that had held that stripes,
chevrons, zigzags and color blocking imprinted on cheerleader
uniforms were not copyrightable because these design elements could
not be disaggregated from the cheerleader dress design, which were
otherwise utilitarian. That is, the District Court found that the
aesthetic features of a cheerleading uniform merge with the
functional purpose of the uniform.
The Circuit Court addressed what it characterized as "the
question that has confounded courts and scholars: When can the
'pictorial, graphic, or sculptural features' that are
incorporated into 'the design of a useful article' 'be
identified separately from, and [be] capable of existing
independently of the utilitarian aspects of the
article[?]'"
In reversing, the Court granted partial summary judgment for
Varsity on the issue of whether Varsity's designs were
copyrightable pictorial, graphic, or sculptural works, holding they
were, because the design elements could exist independently of the
utilitarian aspects of the cheerleading uniforms, thus qualifying
as copyrightable subject matter.
First, the Court gave deference to the registrations that had been
issued by the Copyright Office, finding that a "comparison
between the designs at issue in this case and the other Varsity
registered designs confirms that the Copyright Office consistently
found the arrangements of stripes, chevrons, and color-blocking to
be original and separable from the utilitarian aspects of the
articles on which they appear, and therefore
copyrightable."
Second, in expressly upholding the "conceptual
separability" doctrine, the Court held that "the
Copyright Act protects the 'pictorial, graphic, or sculptural
features' of a design of a useful article even if those
features cannot be removed physically from the useful article, as
long as they are conceptually separable from the utilitarian
aspects of the article." After summarizing various approaches
to assessing conceptual separability, particularly from the Second
and Fourth Circuits, the Court adopted a "hybrid
approach" that asks a series of questions to initially
segregate utilitarian elements of a work, followed by an assessment
as to whether viewers can identify "'pictorial, graphic,
or sculptural features ... separately from . . . the utilitarian
aspects of the [useful] article....'" Finally, there must
be an assessment of whether the "features" of the design
of the useful article "'exist[] independently of[] the
utilitarian aspects of the [useful] article.'"
Ultimately, the Court deemed the designs as "more like fabric
design than dress design," emphasizing that Varsity's
graphic designs do not "enhance the [cheerleading
uniform's] functionality qua clothing" and that
"[t]he top and skirt are still easily identified as
cheerleading uniforms without any stripes, chevrons, zigzags, or
color-blocking." Evidence further supported the conclusion
that the "designs are transferable to articles other than the
traditional cheerleading uniform" and were
"interchangeable." The Court concluded that "the
arrangement of stripes, chevrons, color blocks, and zigzags are
'wholly unnecessary to the performance of' the
garment's ability to cover the body, permit free movement, and
wick moisture" and are therefore copyrightable subject
matter.
A copy of the decision is available here:
Varsity Brands app decision.pdf
Previously published on the New York State Bar Association's EASL Blog
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