While this blog often writes about the “fair use” defense in federal copyright law, we also frequently take note of cases that grapple with larger questions about copyrightability—that is, whether a work is covered by copyright protection at all.  In that vein, the Supreme Court announced earlier this month that it will review a Sixth Circuit decision regarding a thorny issue of copyrightability, in a case that may have implications across the art, fashion, and design industries.

The case arises out of a dispute between two manufacturers of cheerleading uniforms; a group of companies known as Varsity Brands sued a competitor, Star Athletica, on claims including copyright infringement, alleging that Star was selling cheerleading uniforms that looked very similar to some of Varsity’s offerings, particularly with regard to various graphic designs on the uniforms (such as stripes, chevrons, zigzags, and color Blocks).  On summary judgment, a federal district court concluded that Varsity’s designs were not copyrightable at all, because the graphic elements of Varsity’s designs were not physically or conceptually separable from the uniform’s utilitarian function.  See Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422 (W.D. Tenn. Mar. 1, 2014).  On appeal, however, the Sixth Circuit Court of Appeals reversed, and held in favor of Varsity.  See 799 F.3d 468 (6th Cir. 2015).

The Supreme Court has now granted certiorari and plans to hear Star’s appeal next term (which begins in October).  See 2016 WL 98761, at *1 (U.S. May 2, 2016).  The case implicates federal law providing copyright protection for original “pictorial, graphic, and sculptural works,” see 17 U.S.C. § 101, defined, among other ways, to include “works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned,” to the extent that the design “of a useful article . . . 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.”  “Useful article,” in turn, is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”

In the Sixth Circuit proceedings, Star had argued that Varsity’s designs were not copyrightable because they were for “useful articles” only, and their graphic elements were not physically or conceptually separable from the utilitarian aspects of the uniforms.  Varsity, for its part, argued that its designs were separable.  The Sixth Circuit examined the idea of physical separability (for example, a hood ornament that could be removed from a car without damaging either the car or the ornament), but noted that physical separability has its limitations as an analytic tool, and held that courts must also examine the conceptual separability of the design in question.

The Sixth Circuit also acknowledged that case law has been muddled on this point, with courts struggling to create a viable analytic framework or test for determining whether the “pictorial, graphic, or sculptural features” incorporated in the design of a useful article “can be identified separately from, and are capable of existing independently of” the article’s utilitarian aspects when they cannot be removed physically.  For example, it discussed recent Second Circuit case law indicating that “clothing, in addition to covering the body, serves a ‘decorative function,’ so that the decorative elements of clothing are generally  ‘intrinsic’ to the overall function, rather than separable from it.”  Jovani Fashion, Inc. v. Fiesta Fashions, 500 F. App’x 42, 44 (2d Cir. 2012).  But the Sixth Circuit rejected Star’s argument that the Varsity uniforms’ graphic features were “inextricably intertwined with” their utilitarian aspects simply because they serve a decorative function, countering that under such logic, a painting might be deemed unprotectable because it decorates a room.  The Sixth Circuit analyzed the separability question using a combination of approaches, and ultimately concluded that Varsity’s designs were separable and copyrightable.

The court held, among other things, that the arrangement of “stripes, chevrons, color blocks, and zigzags” on the uniforms were “wholly unnecessary” to the uniform’s performance as a useful article, and that indeed, a plain white uniform could adequately serve the same functions.  The court also noted that many courts have distinguished between fabric design (for example, an original pattern or image on cloth, which is often deemed copyrightable) versus clothing design (which is not), and opined that the type of pictorial and graphic features at issue here were more analogous to a protectable fabric design, as distinguished from other, unprotectable elements of clothing design, such as the shape of a garment’s neckline or skirt or the cut of a garment’s trouser legs or pockets, which are inextricably connected with the garment’s utilitarian aspects.  (The Sixth Circuit did not give an opinion about whether Varsity’s designs might be ineligible for copyright protection on the alternative ground that they lack originality, leaving that issue for the district court on remand).

One member of the Sixth Circuit’s three-judge panel dissented, opining that in his view, there was no conceptual separability of Varsity’s design from its function.  Judge David McKeague specifically took issue with the idea that the function of the uniforms at issue was merely to cover the body (which is true of all clothing), or even to allow the wearer to “cheer, jump, kick, and flip” (which is true of any athletic clothing); rather, the function of a uniform like this is to identify the wearer as a member of a specific group, here, a cheerleading team, and that the design elements at issue are central to this function; the designs here, in his view, were not simply decorative (even if they were “aesthetically satisfying”), but rather, enhanced the garment’s utility.  He also rejected the majority’s concerns that a different rule might render many works of art unprotected.  He closed with a lament that the case law in the area of garment design is “a mess” (his words), and expressly called on either Congress or the Supreme Court—or both—to provide clarification.

The Supreme Court’s grant of certiorari may thus represent an acknowledgment that the lower federal courts need some unified guidance on this difficult issue.  (Interestingly, the Court declined to analyze a related question in the case, regarding the extent to which courts, in determining the validity of a copyright, should defer to the Copyright Office’s decision to issue a copyright registration).  The arts community will likely be watching this case closely; as any change in what is copyrightable in such lucrative arenas as fashion, housewares, or other goods where design meets function—as well as in emerging technology spaces such as 3D printing—could alter the economic and legal calculations at play in those industries.