The Sixth Circuit shook up copyright law – and had some fun with it – in the recent decision Varsity Brands, Inc. v. Star Athletica, with reasoning that hinged on an unusual proposition: “[a] plain white cheerleading top and plain white skirt still cover the body and permit the wearer to cheer, jump, kick, and flip.” (No. 14-5237, 2015 U.S. App. LEXIS 14522, *51 (6th Cir. Aug. 19, 2015).) The decision, which found a protectable copyright in stripes, chevrons and patterns on uniforms, stood conventional wisdom on its head, flipped the usual script of copyright analysis, and gave new cheer to fashion designers, who are typically shut out from copyright protection.
First some background. Much to the chagrin of fashion designers nationwide, clothing items are generally classified as the prototypical “useful item” that copyright law does not protect. Numerous European countries have developed a “design right” as a unique form of intellectual property protection for clothing items, yet no such right or protection exists in the United States. Thus, it came as a surprise to many when the Sixth Circuit overturned the District Court for the Western District of Tennessee and found in favor of a clothing manufacturing company that alleged its competitor was infringing its graphic designs by selling cheerleading uniforms adorned with standard stripes, color blocks, and chevron prints.
The case’s Plaintiff, Varsity Brands, Inc. (“Varsity”), is the owner of five copyrighted graphic designs, sewn onto cheerleading uniforms sold by the company. The copyrighted designs vary in layout but consist of the same general elements, including chevron prints, color blocks, zigzag lines, and stripes. Varsity brought suit against Star Athletica, LLC (“Star”), alleging that Star was infringing its copyrighted patterns by selling cheerleading uniforms adorned with substantially similar designs.
The District Court took a distinctive philosophical stance, holding that a cheerleading uniform would not be a cheerleading uniform without stripes, color blocks, and chevron prints, and thus the graphic designs were not separable from the underlying uniform. As a consequence, the copyrights were invalid, and Star could continue to sell its cheerleading uniforms. But the Sixth Circuit dealt a stunning reversal that may breathe life into U.S. clothing design IP protection.
Under federal law, a design of a useful item is copyrightable “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.
In its analysis, the Sixth Circuit recognized that “[c]ourts have struggled mightily to formulate a test” for the test, highlighted by the existence of nine distinct approaches courts have employed to determine whether a design contains features that are separable and capable of existing independently of the useful article. (Varsity Brands at **31-35.) The Sixth Circuit created a tenth approach consisting of five sequential questions:
- Is the design a pictorial, graphic, or sculptural work?
- Is the design that of a useful article?
- What are the utilitarian aspects of the underlying useful article?
- Can the viewer of the design identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article?
- Can the pictorial, graphic, or sculptural features of the design exist independently of the utilitarian aspects of the useful article—i.e., can they exist side by side and be perceived as separate works—one as an artistic work and the other a useful article?
On the facts of Varsity, the Sixth Circuit found that the designs are separable from, and capable of existing independently of, the underlying useful article—the cheerleading uniform. The Court rejected the argument that the graphic features of the designs were so intertwined with the utilitarian aspects of the cheerleading uniform that they could not exist independently. The utilitarian aspect of the uniform, the Court explained, was to “cover the body, wick away moisture, and withstand the rigors of athletic movements,” (id. at *47) and the zigzags, stripes and color blocks were a different and separable matter.
The District Court had based its opinion on a theory of “decorative functionality,” finding that “a blank silhouette of a purported ‘cheerleading uniform’ without team colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular, is not recognizable as a cheerleading uniform.” Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 U.S. Dist. LEXIS 26279, at *24 (W.D. Tenn. Mar. 1, 2014).
The Sixth Circuit fundamentally disagreed on this essentially philosophical point, explicitly finding that an all-white cheerleading uniform is still a cheerleading uniform. See Varsity Brands, 2015 U.S. App. LEXIS 14522, at *51. The Court pointed out that the two-dimensional graphic design could be put on the surface of a number of different types of garments or even printed and hung on the wall as a piece of art. Thus, the stripes, chevrons, color blocks, and zigzags were deemed “‘wholly unnecessary to the performance of’ the garment’s ability to cover the body, permit free movement, and wick moisture” (id. at *53) and therefore, according to the Sixth Circuit, should be properly classified as copyrightable subject matter.
In his pointed dissent, Judge David McKeague classified this area of copyright law as a “mess” and made a plea to Congress or the Supreme Court to provide guidance and clarity to the lower courts. (Id. at **66-67.) Relying on quotes from McKeague’s dissent, Star petitioned the Sixth Circuit to review the decision en banc, but was denied.
Marc Jacobs may not want to cut down the net quite yet. It is too soon to know whether this decision will be viewed in a vacuum and largely ignored, overturned by the Supreme Court, or open the door for copyright holders in the fashion realm. One thing that is certain, however, is that the Sixth Circuit gave designers an upset victory, and that will give opponents something to think about. With the potential for Supreme Court review, the shot clock may be running for a “design right” in the United States.
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