Copyright Protection Of Designs Incorporated In Apparels And Uncertainty In The Law?
Case Analysis: Varsity Brands, Inc. V. Star Athletica, LLC
Varsity Brands Inc., a manufacturer of cheerleading uniforms, brought an action against Star Athletica, LLC, alleging infringement of its copyrighted uniform designs.Regarding thecopyright infringement claims raised by Varsity Brands, the district court concluded that Varsity’s designs were not copyrightable because the graphic elements were not ‘physically or conceptually separable’ from the ‘utilitarian function’ of the cheerleading uniform because the “colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular” make the garment they appear on “recognizable as a cheerleading uniform.” Varsity Brands appealed the district court’s decision before Court of Appeals Sixth Circuit.
- Whether Varsity’s designs are protectable subject matter under the Copyright Act?
- What deference should Court give to the Copyright Office’s determination that Varsity’s designs are non-functional and separable from the “utilitarian aspects of the article” to which they are affixed?
- Whether the pictorial, graphic, or sculptural features of Varsity’s designs can be identified separately from, and are capable of existing independently of, the “utilitarian aspects” of the article?
Arguments raised by the parties
Varsity filed claims against Star Athletica for selling goods bearing designs that were copied from and were substantially similar to Varsity’s designs in violation of the Copyright Act, 17 U.S.C.A § 101. It argued that it’s copyrights claim was based on three grounds: (1) that the district court did not afford appropriate deference to the Copyright Office’s determination of copyrightable, (2) District court used the wrong approach to determine whether a design is a protectable pictorial, graphic, or sculptural work that is separable from the utilitarian aspects of the article, and (3) designs are copyrightable as a matter of law because the graphic works were separable and non-functional.
Star Athletica argued that Varsity did not have a valid copyright in designs for two reasons—(1) Varsity’s design are for ‘‘useful articles,’’ which are not copyrightable and (2) the pictorial, graphic or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms, making those designs ineligible for copyright protection. Varsity argued that its copyrights were valid because the designs were separable and non-functional.
Judgment and rationale
The Court of Appeals reviewed the impugned judgment of the District Court on de novo basis. The court said that in order to prove copyright infringement claims, Varsity must show that (1) it owned a valid copyright in the designs, and (2) that Star Athletica “copied protectable elements of work.” It applied a two prong test based on Lexmark Int’l, Inc. v Static Control Components, Inc. to establish the validity of copyright, wherein first prong tests the originality and non-functionality of the work and whether any copying occurred (factual matter) and the second prong tests whether the portions of the work copied were entitled to copyright protection (legal matter).
Deference to the Copyright Office’s determination on non-functionality and separability from utilitarian aspects of the article:
The Court relied on various court’s judgment while deciding the issue of whether the Court should afford Chevron, Skidmore, or for that matter any deference at all to Copyright Office’s determination on whether designs are non-functional and separable from the “utilitarian aspects of the article” to which they are affixed. As a result, the Court concluded that such determination by Copyright Office is entitled to Skidmore deference, since the agency has 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
(B) Whether cheerleading uniform qualifies as ‘useful article’ and if graphic features in Varsity’s uniform are separable from ‘utilitarian aspect’ of cheerleading uniforms?
The Copyright Act of 1976 provides protection for ‘‘original works of authorship fixed in any tangible medium of expression” and ‘‘works of authorship’’ that the Copyright Act protects are ‘‘pictorial, graphic, and sculptural works.’’ As per §101 of the Copyright Act, ‘‘Pictorial, graphic, and sculptural works’’ include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, etc. Under §101 of the Copyright Act, the design of a ‘useful article’ shall be considered a pictorial, graphic, or sculptural work and thus copyrightable, 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 and ‘useful article’ means an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.
Based on the aforesaid provisions, Court held that to determine whether an article is protectable two-part inquiry is required (i) Whether the design for which the author seeks copyright protection is a ‘‘design of a useful article,’’ and if so, (ii) Whether the design of the useful article incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the useful article?
In order to determine the second question, Court deals with the concept of physical and conceptual separability. “Physical separability’’ means that graphic features of a design can be physically separated from the uniform while leaving the utilitarian aspects of the article. It was observed by the Court that the physical test is less effective when the article at issue is a two-dimensional article as it becomes nearly impossible to detach the graphics from the object on which it appears, as was the case with Varsity’s designs. To determine “Conceptual separability,’’ the Court referred to various approaches proposed and used by the other courts. The Court stated that the protected graphic feature of the design should be separate from the article in functional aspects and need not be existing separately (physically) from the article itself. Thus, the graphic features of a design in an article must be capable of existing as intangible features independent of the utilitarian aspects of the useful article and not independent of the whole article. It stated that if the form or function rather than aesthetics dictates the way the graphical features appear, then those graphical features are not capable of existing independently of the utilitarian.
The Court relied upon the decision rendered in Chosun International, Inc. v, Chrisha Creations, Ltd where the issue was whether a company that created and manufactured plush Halloween costumes made to look like a stuff toy animals had a valid copyright in its designs. In this case, court concluded that, even if some of the aesthetic design elements are merged with the utilitarian elements, and therefore were not conceptually separable, the design was conceptually separable if the “design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences. In addition to the above, it was held that the designs were conceptually separable from the utilitarian function of the costume because the design invokes in the viewer a concept separate from that of the costume’s “clothing” function, and that their addition to the costume was not motivated by a desire to enhance the costume’s functioning, i.e. clothing.
In contrast, in Jovani Fashion, Inc., V. Cinderella, Inc., where the copyrightability of a designer’s prom-dress designs were in dispute, the Court distinguished the above judgment and held that the artistic judgment exercised in applying sequins and crystals to the dress’s bodice etc…did not invoke in the viewer a concept other than that of a clothing. Court held that these design elements are used precisely to enhance the functionality of the dress as clothing for a special occasion and therefore the aesthetics merged with the functional aspect to cover body in a particularly attractive way for that special occasion. The Court acknowledged that the decorative elements of clothing are generally ‘intrinsic’ to the overall function, rather than separable from it.
The Court did its analysis by answering five questions:
- Are Varsity’s designs are “Pictorial, graphic, or sculptural works?”
The Court concluded that the as per the copyright registration Varsity designs were two-dimensional graphical work.
- Do Varsity’s design qualify as “useful articles?”
The Court decided that the designs were sketches which are components of the cheerleading uniform and will have an “intrinsic utilitarian function that is not merely to portray the appearance of clothing or to convey information.
- What are the “utilitarian aspects” of cheerleading uniforms?
The Court concludes that cheerleading uniforms have an intrinsic utilitarian function such as to cover the body wick away moisture, and withstanding the rigors of athletic movements. The Court distinguishes Jovani’s decision and rejects the argument that graphic features in Varsity’s uniform are inextricably intertwined with the utilitarian aspects of a cheerleading uniform because they serve a decorative function. Court rejects this argument as a view that would essentially make all artwork unprotectable and takes sort of an extreme view by drawing analogy of graphic features with Mondrian’s painting which would have the function of decorating the room. It concludes that a graphic feature’s “decorative function” does not render it unable to “be identified separately from” or “incapable of existing independently of, the utilitarian aspects of the article.”
- Can graphic features be identified separately from the parts of the cheerleading –uniform design, which cover the body, permit free movement, and wick moisture?
The court takes this view that without the Varsity’s graphic designs which are used interchangeably a top and a skirt can still be easily identified and for a garment to be cheerleading uniform it just needs to look alike irrespective of any graphics or design and hence Varsity’s graphic design’s do not enhance the functionality qua clothing.
- Can the arrangement of stripes, chevrons, color blocks, and zigzags “exist independently of” the utilitarian aspects of a cheerleading uniform?
Court believes that Varsity’s design may be incorporated on the surface of a number of different types of garments and hence the designs can be identified separately and is capable of existing independently of the functional aspect of the garment.
Conclusion and Analysis
In the dissenting opinion, Justice McKeague finds that there is no conceptual separability and that Varsity’s designs are not copyrightable. He differs from the majority view in defining functionality of the cheerleading uniform and states that the graphics in Varsity’s uniform only serves to identify the wearer of the uniform as a cheerleader and a reasonable observer would not associate a blank outfit with cheerleading as opposed to the reasoning given by the majority where they said for a garment to be identified as a cheerleading uniform they all have to just look alike, it can be a plain outfit without any stripes, zigzags, color blocks. He also refers to Jovani’s decision and states that clothing provides many functions, but a uniform at its core identifies its wearer as a member of the group and that stripes, braids, chevrons on cheerleading uniform are integral part to its identifying function. While analyzing conceptual separability, Justice McKeague points out that no evidence was found as to the fact that Varsity’s designers exercised any artistic judgment independently of the functional influences rather than merger of aesthetic and functional considerations.
As quoted in the dissenting opinion, ultimately this whole analysis is based on how the Court perceives and defines function of an “useful article” in this case an apparel. Whether it should be as basic as clothing, as broad as the majority defines it for a garment to be athletic gear or more specific as identifying the wearer as a cheerleader? According to me, the justification given by both the majority and the dissent in identifying the function of an apparel to be confined to an athletic gear or to be narrowly identified as a cheerleader is very extreme and irrational take on the subject. The reasoning given by the majority, is too broad to cover everything under the sun as copyrightable and dissenting opinion takes too restrictive approach in identifying function of the cheerleading uniform, thus undermining the efforts of the designers in arrangement of those graphic features in the design of the garment and dismissing the idea of aesthetic sense involved in putting together an ensemble, irrespective of the function of the apparel.
Devanshi Pankaj Desai is a LLM candidate, 2018, at NYU School of Law.