You’ve gotta keep ‘em separated

Laura Ganoza, Julie McGinnis and Jeffrey Greene of Foley & Lardner examine Star Athletica v Varsity Brands and the copyrightability of elements of useful articles

Later this month, the US Supreme Court will hear oral arguments in Star Athletica v Varsity Brands. The central question presented asks the Supreme Court to clarify the appropriate test that should be used to determine when a feature of a useful article is protectable under United States copyright law. While the case involves cheerleading uniforms, the ruling may have significant implications for fashion designers and manufacturers, as well as other creators and manufacturers of products that have both aesthetic and utilitarian functions, particularly given the historical hesitation to grant copyright protection to apparel design generally. While fabric patterns and designs have long been eligible for copyright protection, the scope of protection for other design elements of apparel has been unclear. This will be the first time that the Supreme Court will decide a copyright case for apparel.

A useful article is one with an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Items such as furniture and articles of clothing are considered useful articles. Useful articles are not protected by copyright, but the Copyright Act expressly provides that the design of a useful article can be protected, but 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.

Varsity Brands and Star Athletica are designers and manufacturers of cheerleading uniforms. Varsity Brands brought a copyright infringement suit against Star Athletica claiming Star Athletica copied five of Varsity Brands’s copyrighted cheerleading uniform designs. Prior to filing the lawsuit, Varsity Brands had successfully registered all five of the designs at issue with the Copyright Office. Star Athletica argued that Varsity Brands did not have a valid copyright in the designs because the designs were for non-copyrightable useful articles, and the pictorial, graphic or sculptural elements of Varsity’s designs were not separable from the utilitarian aspects of the uniforms, rendering them ineligible for copyright protection. The designs at issue included varying arrangements of stripes, chevrons, zigzags, and colour block.

Without giving deference to the copyright registration, the lower court agreed with Star Athletica and held that the designs were not eligible for copyright protection, given their utilitarian function. Varsity Brands appealed to the US Court of Appeals for the Sixth Circuit, which overturned the lower court and held that the designs were, in fact, eligible for copyright protection. Star Athletica petitioned the Supreme Court, asking it to determine the proper test of copyrightability when useful articles are at issue.

When analysing whether pictorial, graphic or sculptural elements of a useful article can be identified separately from the useful article itself, courts look at both physical separability and conceptual separability. Physical separability is often more easy to discern, as it asks whether the pictorial, graphic or sculptural features can be physically separated from the article while leaving the utilitarian aspects of the article intact.

An example used by the Copyright Office is a sufficiently creative decorative hood ornament on an automobile, which could be ripped from the hood of the automobile without destroying the ornament or the automobile. This is a physically separable sculptural aspect of the design of an automobile that can be identified separately from and is capable of existing independently of the useful functions of a vehicle.

But when it is difficult or impossible to physically separate elements of an article, as is the case with most two-dimensional works, a court must consider whether the elements can be conceptually separated, such that the feature can be clearly recognisable as a pictorial, graphic, or sculptural work even if it cannot be physically separated from the work. For example, in Jovani Fashion v Cinderella Divine (2011), the District Court for the Southern District of New York wrestled with whether the ornamental design on a prom dress, such as the selection and arrangement of sequins and beads and their respective patterns, and the wire-edged tulles added to the bottom of the dress, constituted a protected work of visual art. The court analysed conceptual separability under several existing tests and concluded that none of the elements were conceptually separable from the dress itself.

Varsity Brands asserts that the stripes, chevrons, zigzags, and colour blocks that make up its cheerleading uniform designs can be conceptually separated. Meanwhile, Star Athletica urged that such design elements cannot be conceptually separated (and thus, are not protectable) because those design elements are precisely what makes the cheerleading uniform a cheerleading uniform. Star Athletica argued that a cheerleading uniform without team colours stripes, chevrons, zigzags and similar designs typically associated with sports in general, and cheerleading in particular, is not recognisable as a cheerleading uniform, and is only a plain white pleated skirt and crop top.

As the Sixth Circuit recognised, the Copyright Office and courts currently employ one or more of a number of tests to determine whether a feature is conceptually separate from the work, including the following:

Can an artistic feature and a useful article both exist side by side and be perceived as fully realised, separate works?

  • Are the artistic features of a design primary to a subsidiary utilitarian function?

  • Are the artistic features of the design unnecessary to the performance of the article’s utilitarian function?

  • Would an ordinary, reasonable observer identify two different concepts?

  • Do the design elements reflect the designer’s artistic judgement exercised independently of functional influences?

  • If the copyrightable material is separated, does the useful article’s functionality remain intact?

  • If the article had no utilitarian use, would it still be marketable simply because of its aesthetic qualities?

  • Are the pictorial, graphic, or sculptural features dictated by something other than the form or function of the utilitarian aspects of the useful article?

The Second and Fourth Circuits have each implemented some of these tests when analysing separability. In Chosun International v Chrisha Creations (2006), the Second Circuit determined that a company had a valid copyright in the design of Halloween costumes made to look like stuffed toy animals. The court arrived at its finding by noting that the design elements could be conceptualised as existing independently of the costume’s utilitarian function, reflected the artistic judgement of the designer exercised independently of functional influences, invoked a separate concept from the costume’s function as ‘clothing’, and were not added by a desire to enhance the costume’s function as clothing.

Similarly, the Fourth Circuit used a hybrid approach in Universal Furniture Int’l v Collezione Europa USA (2010), finding that decorative elements adorning furniture were eligible for copyright protection because the designs were “wholly unnecessary” to the furniture’s utilitarian function and the designer’s process reflected artistic judgement exercised independently of functional influences.

After reviewing these approaches, the Sixth Circuit identified its own approach. Once it has been determined that a useful article is at issue, the court asks what the utilitarian aspects of that useful article are (for example, providing a place to sit is the utilitarian aspect of a chair). Once the utilitarian aspects have been identified, the court then asks whether the viewer of the design can identify the pictorial, graphic or sculptural features separately from the utilitarian aspects, and whether those features can exist independently of the utilitarian aspects. If the features of the design are not required by the utilitarian function or are unnecessary to it, then the feature can exist on its own and is eligible for copyright protection (subject to other requirements such as originality).

In many ways, this approach is similar to the distinction between de jure and de facto functionality with respect to the law of trade dress. When a product is de jure functional, the product has a particular design because it works better that way—a design that is de jure functional can never be entitled to trade dress protection. In contrast, a product is de facto functional with respect to functionality that is inherent in the product itself—for example, a bottle’s purpose is to hold liquid. De facto functional features, such as a specific design of a bottle that does not affect the functionality of the bottle with respect to its ability to hold liquid, can be entitled to trademark protection. Each approach looks at whether the design is necessary for the utilitarian function of the product. Generally speaking, if the design is not necessary to the function, then copyright or trade dress protection may be available.

In its Supreme Court brief, Star Athletica argued that separability should be analysed by first deciding whether a pictorial, graphic or sculptural work is a design of a useful article. This requires a court to identify all of the article’s inherent, essential or natural functions. Star Athletica suggested that the uses for which an article is marketed is strong evidence of its functions (such as a cheerleading uniform being used to identify the wearer as a cheerleader). Once the inherent, essential or natural functions have been determined, Star Athletica argued that the court should consider whether a feature of the article can be recognised as a unit by itself, apart from the utilitarian aspects, because it is purely artistic. If the answer is no, Star Athletica argued that the feature cannot be copyrighted. If yes, Star Athletica suggested that the court should consider whether the artistic feature and the useful article could both exist side by side. In order to be copyrightable, Star Athletica argued that a feature must be purely artistic—that is, it cannot advance the utility of the article, and the article cannot depend on the feature for its utility.

Finally, in a close case, Star Athletica argued that a court should look to the law of trade dress and decline to provide copyright protection to design features of a useful article based on Congress’s choice not to extend copyright protection to industrial designs.

In response, Varsity Brands asserted that the language of the Copyright Act provides a straightforward rule that supports finding that a 2D graphic or pictorial design is copyrightable. Varsity Brands asserted that 2D artwork applied to a useful article is “inherently separable”, because, among other reasons, such artwork can appear on a variety of different media (such as a cheerleading uniform, a duffel bag, a tracksuit, or a coffee mug), and the function of 2D art is typically purely decorative or communicative. Varsity Brands further urges that the same rule regarding 2D artwork applied to any other useful article should apply to clothing as well.

Oral arguments in this case are scheduled for 31 October 2016. The Supreme Court’s ruling could substantially transform the landscape with respect to a clothing designer or manufacturer’s ability to prevent others from replicating its designs. As a result, several interested parties, including trade groups, law professors, and the US government, have filed amicus briefs in the case. Supporters of Star Athletica’s position urge that granting protection to designs such as those at issue in this case would stifle creativity and competition. For example, in an amicus brief filed by Public Knowledge and others, the amici argued that individual creators rely on the expectation that useful articles are “generally adaptable, reusable, and improvable without incurring commercial-level transaction costs of copyright licensing”, and that appearance of clothing should be considered utilitarian because clothing design and fashion are tied to “basic constitutional liberties of speech and association”.

Those supporting position of Varsity Brands, on the other hand, urged that the plain language of the Copyright Act requires protection of design elements such as those at issue in this case and that such protection is necessary for the viability of the fashion industry due to the ease and speed with which designs can be copied. The US solicitor general’s brief on behalf of the US argued that the Copyright Act codifies longstanding administrative practice that treats 2D surface decoration for a garment as copyrightable—the copyright owner of such a 2D decoration has the right under the Copyright Act to reproduce such 2D artwork in any medium, including clothing. In its amicus brief, the Council of Fashion Designers of America (CFDA) urged that technological innovation leaves independent fashion designers vulnerable to copying by “fast-fashion” retailers and manufacturers, which have have the ability to produce high volumes quickly and inexpensively. The CFDA argued that “brazen piracy” has become the business model for many fast-fashion manufacturers, threatening independent and emerging designers.

In addition to the fashion industry, the announcement of a test for determining copyrightability of elements of a useful article may affect other industries involving goods that combine artistic and utilitarian elements, including the booming 3D printing industry. Depending upon how the Supreme Court rules, the parameters of copyright protection in the apparel industry may be re-shaped, or at a minimum, clarified.

We will continue to follow this case, and all stakeholders in the fashion industry should do so too.
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