Attorneys cheer (and jeer) high court’s cheerleading outfit copyright holding

March 23, 2017

The U.S. Supreme Court has ruled that a two-dimensional cheerleading uniform design may be protected under copyright law even if the outfit has a utilitarian function, and attorneys say this decision could affect the fashion industry and other markets.

In a 6-2 decision, the high court sided with Varsity Brands Inc., a holder of more than 200 copyrighted uniform designs, in its infringement battle with rival cheerleading outfit maker Star Athletica LLC.

Justice Clarence Thomas, writing for the majority, said the chevron, stripes and zigzags on Varsity’s cheerleading uniforms were two-dimensional works of art, deserving copyright protection under Section 101 of the Copyright Act, 17 U.S.C.A. § 101.

That provision allows designs of useful articles to be protected as artistic creations if they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Varsity’s uniforms may serve to identify the wearers as cheerleaders, but the design elements could be “physically or conceptually” separated from that utilitarian function, Justice Thomas said.

Justice Ruth Bader Ginsburg wrote a concurring opinion, saying the majority’s separability analysis was unnecessary because Varsity’s designs were not useful articles themselves, but artistic works reproduced on useful articles.

Justice Stephen Breyer, joined by Justice Anthony Kennedy, dissented, saying the designs should not be copyrightable.

‘Sigh of relief for fashion innovators’

Michelle Mancino Marsh, a fashion law partner at Arent Fox LLP’s New York office, said the ruling is “a sigh of relief for fashion innovators and IP lawyers alike.”

“The impact of the ruling is to reinforce the value of copyright in applied arts, and in particular for the apparel industry,” said Marsh, who filed an amicus brief in the case on behalf of the Fashion Law Institute in September.

John DiMatteo, a partner at Holwell Shuster & Goldberg in New York, who was not involved in the litigation, also called the decision “a big step forward for clothing designers.”

“While it is too early to predict the consequences of the decision, we can expect clothing designers to file more copyright registrations and ask for higher prices to use their copyrighted designs, as well as additional lawsuits against parties that shamelessly copy those designs,” DiMatteo said.

Elizabeth Kurpis, a New York-based fashion attorney at Mintz Levin, who also was not involved in the case, categorized the decision as “a big win for the fashion industry.”

“Designers will now have a clearer guide on how best to protect portions of their work that may not have been deemed covered under U.S. copyright law because they were considered to be strictly ‘useful,’” she said.

‘Impact beyond clothing’

Tony McShane, an IP partner from Neal Gerber & Eisenberg in Chicago, who was not involved in the case, said “the decision is likely to have an impact beyond clothing.”

“It suggests that designs on common household items and personal electronics, for example, will be protected by copyright if they can be imagined separate and apart from the articles themselves as or as part of a painting or some other two-dimensional work.”

Mintz Levin’s Kurpis agrees. She also predicted the decision will have ramifications for other industries, including 3-D printing.

“The potential consequences for the 3-D printing industry are enormous, as this expansion can hypothetically apply to any printed object so long as the owners can argue that there are elements that are not strictly utilitarian, a tough pill to swallow for an industry dependent on the ability to print a vast array of objects at the push of a button,” she said.

The ‘conceptually separable’ dispute

Varsity Brands sued Star Athletica for copyright infringement in 2010.

Star Athletica successfully defended itself in the trial court, arguing copyright law did not protect Varsity’s uniform designs, which were “useful articles” that helped to identify cheerleaders. Varsity Brands Inc. v. Star Athletica LLC, No. 10-2508, 2014 WL 819422 (W.D. Tenn. Mar. 1, 2014).

Varsity appealed and prevailed.

A divided 6th U.S. Circuit Court of Appeals said design elements such as two-dimensional chevrons and zigzags deserve protection so long as they are “conceptually separable” from the uniform’s useful elements. Varsity Brands Inc. v. Star Athletica LLC, 799 F.3d 468 (6th Cir. 2015).

Star Athletica filed a certiorari petition in January 2016.

Consistent with Mazer

The Supreme Court majority upheld the 6th Circuit decision.

“If a design would have been copyrightable as a standalone pictorial, graphic or sculptural work, it is copyrightable if created first as part of a useful article,” Justice Thomas wrote.

He cited Mazer v. Stein, 347 U.S. 201 (1954), which held that a dancer statuette that was part of a lamp was copyrightable, despite the lamp’s useful function.

The Copyright Office approved the Mazer holding when it enacted a regulation to extend protection to works of art that might have a useful purpose, Justice Thomas said.

Larry Robins, an IP partner at the Boston office of Sullivan & Worcester, said the recent ruling is wholly consistent with Mazer, but may have been a disappointment for some designers.

“There were some who were hoping for a broader ruling that might have opened the door for greater protection for industrial designs,” said Robins, who was not involved in the case.

That door, however, was firmly shut by Justice Thomas, who found that something incapable of being a pictorial, graphic or sculptural work cannot be protected, Robins said.

Gloria C. Phares, an attorney from the New York law firm Hoffmann Marshall Strong LLP, who was not involved in the litigation, called the case “ridiculous.”

“The court was forced to consider this otherwise straightforward case because of lower courts’ willingness to advance tests that would have distorted the statutory language that protects a design that is conceptually separable from the material on which it is reproduced,” she said.

Dissent: Other forms of protection

In his dissent, Justice Breyer compared a cheerleading uniform’s design to car, airplane or food processor designs, which do not get copyright protection because they are functional and cannot be mentally pictured without replicating a picture of a utilitarian object.

“Congress’ decision not to grant full copyright protection to the fashion industry has not left the industry without protection,” he said.

“The fashion industry has thrived against this backdrop, and designers have contributed immeasurably to artistic and personal self-expression through clothing,” he said, warning that the court’s decision may risk unforeseeable disruptions and price increases in the $370 billion U.S. market.

Laura Ganoza, an IP litigation lawyer at Foley & Lardner’s Miami office, who was not involved in the case, said she was not surprised Justice Breyer wrote the dissent.

“Given his questions at oral argument, his skepticism about using copyright laws to protect fashion designs was very apparent,” she said. “He reiterated these concerns on the dissent by pointing out that other forms of IP protection like design patents and trademarks are still available.”

Star Athletica LLC v. Varsity Brands Inc. et al., No. 15-866, 2017 WL 1066261 (U.S. Mar. 22, 2017).