Star Athletica, LLC v. Varsity Brands, Inc., et al.

WHAT IS THE CORRECT APPROACH TO DETERMINE WHETHER A DESIGN IS A PROTECTABLE PICTORIAL, GRAPHIC, OR SCULPTURAL WORK SEPARABLE FROM THE UTILITARIAN ASPECTS OF THE ARTICLE?

Congress defines a “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Both Star Athletica and Varsity agree that copyright law protects parts of the design of a “useful article” as original “pictorial, graphic, and sculptural works” if the design incorporates design features that are capable of being identified separately from and can exist independently of the article’s “utilitarian” features.

Star Athletica proposes a new, two-part test to determine if an article’s design features may be copyrighted. First, Star Athletica argues that the article’s design feature must be able to be identified separately from its utilitarian aspects. This “identified separately” test questions whether an article’s design feature is artistic, utilitarian, or both: if an article’s design feature is solely artistic, it can be copyrighted; if the design feature is even slightly utilitarian or both utilitarian and artistic, it cannot be copyrighted. Recognizing that the “identified-separately” test may not be determinative in many cases, Star Athletica then advocates for a second inquiry—the “independent-existence” test. Under this second inquiry, the design feature and the utilitarian article must be able to exist side-by-side as fully realized, separate works.Again, Star Athletica argues that only a solely artistic design feature would be protectable. Star Athletica notes three distinct approaches courts and the Copyright Office have used to assist with this “independently-existence” analysis; the approaches include considering (1) whether the design feature could be physically removed without altering the utilitarian aspects of the article (“physical separability” approach), (2) whether the designer intended to produce a useful design feature (“design process” approach), and (3) whether the design feature would still be marketable to some significant segment of the community without its utilitarian function (“marketability” approach). Star Athletica further added that, in a close case, a court should err on the side of not extending copyright protection for a useful article.

In response, Varsity argues that Star Athletica mixes and matches various lower court approaches to create a new, multi-part test that would “merely sow confusion.” First, Varsity argues that Star Athletica’s sharp distinction between artistic design features and utilitarian features is fundamentally inconsistent with the Copyright Act’s protection of “applied art,” which, by definition, has both artistic and “practical, utilitarian elements.” Varsity further notes that the Copyright Office should not have to “play the role of art theorist” that would be required of it to distinctly separate aesthetics and utility. Varsity also takes issue with Star Athletica’s “independent-existence” inquiry. Varsity argues that each of the three conceptual-separability approaches advocated by Star Athletica is inconsistent with the Copyright Act’s text, history, and purpose. For example, Varsity argues that the “design-process” approach depends on the designer’s state of mind and thus could produce inconsistent results—clearly not what Congress intended. Similarly, Varsity notes that the marketability approach has drawn heavy criticism for, among other reasons, privileging “popular art” over more unfamiliar art forms. Lastly, Varsity argues that nothing in the text, structure, or history of the Copyright Act supports a “presumption” against separability, as Star Athletica argues.

CAN VARSITY’S DESIGN FEATURES BE SEPARATED FROM THE UNIFORM’S UTILITARIAN ASPECTS?

Star Athletica notes a cheerleader uniform has a number of inherently utilitarian functions, such as identifying that the wearer is a cheerleader and member of a particular team. Thus, a cheerleader uniform fails the “identified-separately” requirement because the uniform’s stripes, chevrons, zigzags, and color blocks cannot be recognized apart from a cheerleader uniform’s utilitarian aspects but are essential to the uniform’s use or purpose. What’s more, Star Athletica notes, the Copyright Office initially rejected many of Varsity’s cheerleading uniform designs.

Although Varsity argues that its designs are copyrightable without any need for separability analysis, it contends that even under separability analysis, the design features are easily separable from the utilitarian aspects of cheerleading uniforms—wicking away moisture and permitting the wearer to “cheer, jump, kick, and flip”—and therefore are copyright-eligible. Varsity maintains that a design that merely provides identification or “portraying appearance,” such as conveying that a person is a cheerleader, is not a utilitarian function. Varsity argues that cheerleading uniforms can exist without any designs on their surfaces and, thus, its designs satisfy the Copyright Office’s test because the design and the utilitarian article on which they appear (cheerleading uniforms) can exist side-by-side. Varsity further argues that its designs are clearly separately identifiable from and capable of existing independently of the utilitarian aspects of cheerleading uniforms because the designs have been reproduced on other garments such as warm-ups and jackets. Varsity asserts that the particular design does not affect the garment itself, whatever it may be, because the garment has a “standard base” that does not vary with the design placed on it—thus further supporting the separability of the garment’s design and utilitarian functions.

ARE VARSITY’S DESIGN FEATURES COPYRIGHTABLE AS A MATTER OF LAW?

Star Athletica posits Varsity’s garment design features are not copyrightable as a matter of law. Star Athletica argues that the courts should defer to Congress’s longstanding rule that garment designs cannot be copyrighted because they are useful articles and extend this rule to garment design features. Star Athletica notes not only the purpose of the Copyright Clause to encourage the development of artistic works but also Congress’s continued refusal to expand protection of useful articles designs, including garments designs. Thus, Star Athletica argues, courts are properly reluctant “to expand the protections afforded by the copyright without explicit legislative guidance.” Star posits this reluctance extends to any feature normally incorporated into the garment—such as the stripes, chevrons, or zigzags at issue here—unless a particular feature is sufficiently separable from the garment’s utilitarian function.

In response, Varsity argues that as a threshold matter, its graphic designs are two-dimensional graphic designs that appear on useful articles, rather than designs of useful articles, and so can be copyrighted as “applied art.” Varsity maintains that the Copyright Office consistently registers two-dimensional artwork that appeared on the surface of useful articles, such as “[a]rtwork printed on a t-shirt, beach towel, or carpet.” Thus, while copyright laws usually do not protect the overall design of a garment, “the fashioning of … fabric into an article of clothing” does not “cancel out the copyright of the design imprinted thereon.”