Feature

Gimmie an “S” for Separability

Supreme Court to Consider Copyrightability of Designs on Cheerleading Uniforms

Robert W. Clarida

©2016. Published in Landslide, Vol. 9, No. 2, November/December 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Some Supreme Court watchers have recently speculated that the Court’s temporary 4–4 ideological stalemate has led it to avoid taking cases involving hot-button issues and instead to fill its calendar with relatively uncontroversial disputes, particularly in the area of intellectual property.1 One case that arguably lends credence to this theory is Star Athletica, LLC v. Varsity Brands, Inc.,2 as to which the Court granted certiorari from the Sixth Circuit on May 2, 2016. Star Athletica raises no contentious political issues, to put it mildly: the case concerns the copyrightability of simple two-dimensional graphic designs that are printed on, or woven into, the fabric of cheerleading uniforms. The case does, however, give the Court an opportunity to harmonize an uncommonly chaotic body of case law surrounding the application of copyright law’s “conceptual separability doctrine” to useful articles, including garments. The Sixth Circuit’s resolution of the issue in Star Athletica explicitly wrestles with no fewer than nine analytic approaches developed by various circuits and treatises, as well as the Copyright Office, and ultimately applies its own “hybrid approach” to conclude that the two-dimensional designs at issue are copyrightable.3 The Supreme Court has narrowed the grant of certiorari to the following question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”

Under settled copyright principles, the cheerleader uniforms in Star Athletica certainly qualify as useful articles, but the issue is how to determine when pictorial, graphic, and sculptural works—like the stripes and chevrons on the Varsity uniforms—may retain their copyrightability despite having been incorporated into such useful articles. And that in turn hinges on defining what, exactly, is the “utilitarian function” of the useful article in question; it is impossible to know if a design is separable from a function without first being very clear about what the function is. This article will briefly examine the origin of the separability doctrine in the Supreme Court’s own jurisprudence and will argue that a correct understanding of this history provides a solid basis for affirming the Sixth Circuit’s Star Athletica ruling, as well as suggesting a vastly simpler and less metaphysical alternative to the numerous tests the lower courts have devised to address conceptual separability. However the Supreme Court ultimately rules, it could provide this area of the law with some much-needed uniformity (no pun intended).

The Origin of Separability: From Mazer v. Stein to the Copyright Act

The foundation of current law concerning copyright for useful articles is the 1954 Supreme Court decision in Mazer v. Stein.4 The work in Mazer was a lamp, the base of which incorporated a sculptural figure of a Balinese dancer. The Court concluded that the sculptural figure was copyrightable under § 5(g) or (h) of the 1909 Act5 as a “work of art” even though it was part of a useful object that fell outside the scope of copyright law. Shortly after Mazer, the Copyright Office announced a new policy allowing for copyright in textile designs, which had previously been denied protection if they were embodied in a useful article such as a piece of clothing or furniture.6 That was followed by a Copyright Office regulation, which for the first time explicitly recognized separability as the key concept in deciding whether a feature of a useful article could be registered for copyright: “[I]f the shape of a utilitarian article incorporates features, such as artistic sculpture, carving, or pictorial representation, which can be identified separately and are capable of existing independently as a work of art, such features will be eligible for registration.”7

In drafting the 1976 Act,8 Congress codified the Mazer holding by creating two new, interrelated definitions in § 101, based largely on the Copyright Office’s post-Mazer separability regulation: (1) Congress defined “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”; and (2) Congress broadened the previous category “works of art” to the more inclusive “pictorial, graphic, and sculptural” (PGS) works, and specified that “the design of a useful article, as defined in this section, shall be considered a [PGS] 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.”

In the intervening decades, the Supreme Court has never been called upon to interpret this statutory language. The lower courts frequently have, however, and virtually all of them have decried the doctrinal morass of vague, inconsistent, and unwieldy “approaches” they are forced to apply. One point of general agreement among the courts, expressly stated in the legislative history of the 1976 Act,9 is that copyright survives if the asserted work of authorship is either physically or “conceptually” separable from the utilitarian aspects of the useful article. But a clear, workable definition of conceptual separability has proved elusive, and at least one circuit—the D.C. Circuit, whose rulings are binding on the Copyright Office—flatly refused to recognize conceptual separability at all under the 1909 Act, and has not revisited the issue since.10 Against this background, the dissent in the Sixth Circuit’s Star Athletica explicitly called on the Court or Congress to intervene, and the Court has answered that call.

Varsity Brands v. Star Athletica: District Court Ruling

The works at issue in Star Athletica were cheerleading uniforms, or more precisely, the two-dimensional graphic designs imprinted onto or woven into the fabric of the garments. Images of the designs, as included in the Sixth Circuit’s decision, are set forth below.

Plaintiff Varsity Brands registered those designs as two-dimensional artwork with the Copyright Office, the defendant copied them, and litigation ensued in the Western District of Tennessee. It has long been held that an item of clothing is a useful article because it keeps people warm, dry, and covered up, but as per the 1954 Copyright Office policy, a design “imprinted on fabric, such as a rose petal” is copyrightable nonetheles11 The rose petal design on a dress or a raincoat does not function, in a copyright-precluding sense, it merely decorates, like the Balinese dancer on the lamp in Mazer. And that decoration is separable from the utilitarian function of the dress or raincoat, which could, obviously, bear any of a million different designs and still function.

On the defendant’s motion for summary judgment, the district court acknowledged this principle in theory, but failed to recognize that the designs on a cheerleading uniform don’t function either, in any copyright-precluding sense, they merely decorate. Instead, after summarizing the separability tests employed by various circuits, the district court opined in effect that a graphic design on a cheerleading uniform, as opposed to the same design on any other garment, is not copyrightable because “the utilitarian function of a cheerleading uniform is not merely to clothe the body; it is to clothe the body in a way that evokes the concept of cheerleading. Artistic judgment and design are undeniably important in this context, but they are not separable from the utilitarian function of the resulting garment.”12 In other words, the district court held that the “function” of the uniform included the purely social function of communicating the information that the wearer is a cheerleader. Recall, however, that the statute explicitly states in its definition of “useful article” that the “utilitarian function” of a useful article cannot be “to portray the appearance of the article or to convey information.”

Avoiding this statutory language, and making no mention of Mazer, the district court applied lower court case law that stresses the “concept in the viewer’s mind” as a determinant of separability:

A desk without carved designs on it, although perhaps less aesthetically pleasing, is still a desk. As such, it still serves its utilitarian function and is separate conceptually from the carved designs themselves. In contrast, a blank silhouette of a purported “cheerleading uniform” without team colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular, is not recognizable as a cheerleading uniform. It evokes an entirely different concept in the viewer’s mind. This is because, as a matter of law, the design of cheerleading uniforms has merged with the utilitarian function they serve.13

The district court thus asserted that a cheerleading uniform is not merely a functional garment, like any other dress; it has a different, additional function solely because of the decoration placed on it. Does it not also follow, under this reasoning, that a “blank silhouette” of a lamp without a Balinese dancer is not a Balinese dancer lamp, and therefore “evokes an entirely different concept in the viewer’s mind” than the decorated lamp in Mazer?

The district court’s analysis makes very little sense as copyright law, but the court purported to ground it in “classical philosophy,” citing Plato’s concept that a tree possesses “tree-ness.” Thus “the court’s focus eventually turns to the ‘cheerleading-uniform-ness’ of a fabric garment.”14 For the Star Athletica district court, the decorative elements were functional because the garment would not be recognized as a cheerleading uniform without them. But this alleged “function” of possessing “cheerleading-uniform-ness” completely misinterprets what Congress intended when it spoke in § 101 of the “utilitarian aspects” of a useful article, in the wake of Mazer. If a court allows the appearance of a useful article, or the information it conveys, to become part of the definition of the “function” of that object, then by definition no separability can ever exist, the statute is meaningless, and Mazer has been overruled sub silentio.

Sixth Circuit Reversal

Fortunately, the Sixth Circuit averted those potential calamities by reversing 2–1,15 granting partial summary judgment for the plaintiff and remanding for further proceedings. Writing for the majority, Judge Karen Nelson Moore first addressed the procedural question of how much deference courts should give to the Copyright Office’s determination that the plaintiff’s designs were registrable. The issue was not included in the “question presented” on which the Supreme Court has now granted certiorari, but the Sixth Circuit held that such Copyright Office determinations are entitled to so-called Skidmore deference and the district court erred by not giving greater deference to the Copyright Office determination of registrability.16

Turning to the substantive issue of conceptual separability, the panel majority quoted the Copyright Office Compendium III, the internal manual of Copyright Office procedure, for its definition of the term. The Compendium III says that conceptual separability means that “a feature of the useful article is clearly recognizable as a pictorial, graphic, or sculptural work notwithstanding the fact that it cannot be physically separated from the article by ordinary means.”17

The court then identified nine different judicial, administrative, and scholarly “approaches” that have been proposed to determine whether a work of authorship qualifies as sufficiently separable, drawn from cases involving belt buckles, torso mannequins, mannequin heads, fish mannequins, bicycle racks, and fanciful chef hats for casino employees. Finding no single test entirely satisfactory, the Sixth Circuit combined elements of several into a hybrid approach. The key question, which the court concluded should be resolved before addressing separability, is simply “what are the utilitarian aspects of the useful article?”

For example, the utilitarian aspect of a chair is to provide a place for a person to sit. Portraying the appearance of the useful article and conveying information are two utilitarian aspects that courts may not use to determine whether pictorial, graphic, or sculptural features are separable. We believe that considering these two functions’ “utilitarian aspects” in addition to an article’s other utilitarian functions for the purpose of determining the separability of a graphic design would be at odds with the Copyright Act’s definition of what makes an article a useful article.18

With this question, the Sixth Circuit put its finger on the principal error of the district court, namely its focus on the uniforms’ alleged “function” of conveying the information that the wearer is a cheerleader. Here, the panel majority concluded:

Cheerleading uniforms have an intrinsic utilitarian function, namely to cover the body, wick away moisture, and withstand the rigors of athletic movements. Star contends that cheerleading uniforms identify the wearer as a cheerleader and a member of a cheerleading team. But this is no different than saying that a utilitarian aspect of a cheerleading uniform is to convey to others the fact that the wearer of the uniform is a cheerleader for a particular team. And therefore Star’s purported utilitarian aspect of a cheerleading uniform is an impermissible factor.19

Once the permissible statutory, utilitarian function of the useful article has been identified, the court would consider whether the work of authorship was “objectively necessary” to that function or whether instead is “wholly unnecessary to the performance of the utilitarian function.”20 Again the key is to define the function, in order to determine if the asserted work of authorship is necessary for the object to perform that function, and the majority found that “Varsity’s graphic designs do not enhance the cheerleading uniform’s functionality qua clothing.”21 The court also observed that not all cheerleading uniforms must look alike to be cheerleading uniforms: “The five Varsity designs are examples of how a cheerleading uniform still looks like a cheerleading uniform no matter how different the arrangement of the stripes, chevrons, colorblocks, and zigzags appear on the surface of the uniform.”22 Moreover, the court noted that “nothing (save perhaps good taste) prevents Varsity from printing or painting its designs, framing them, and hanging the resulting prints on the wall as art.”23

On the critical distinction between garment design and fabric design, the court distinguished a New York decision, Jovani Fashion, Inc. v. Cinderella Divine, Inc.,24 which had found no conceptual separability in the positioning of sequins, beads, ruched satin, and tulle on a prom dress. The Second Circuit in its summary affirmance in Jovani observed 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.”25 For the Sixth Circuit majority, this reliance on an asserted “decorative function” to deny separability for PGS works was fatally overbroad: “Mondrian’s painting would be unprotectable because the painting decorates the room in which it hangs. But paintings are copyrightable. . . . And statuettes adorning the base of a lamp would not be copyrightable under this theory because they serve the function of decorating an otherwise boring lamp base.”26 Accordingly, the majority concluded that a PGS work’s “decorative function” does not enter into a properly conducted separability analysis. The statute speaks of separability between the PGS work and the “intrinsic utilitarian function” of a useful article, not, as the Second Circuit wrote in Jovani, to whether the decorative elements are “generally intrinsic to the overall function” of the useful article. And then, of course, the statute narrows the meaning of “utilitarian” by excluding the conveyance of information. The Sixth Circuit does not explicitly fault the Second Circuit for effectively redefining the word “utilitarian” in the statute, but if the question arises in the Supreme Court, as seems likely, the Second Circuit’s overly broad language in Jovani could be difficult to square with the far narrower language of the Act.

Accordingly the Sixth Circuit majority reversed the district court and granted summary judgment to plaintiff Varsity on the issue of copyrightability, but also remanded to the district court for further proceedings as to the originality of the Varsity designs.

Judge David McKeague dissented, complimenting the majority for its “thoughtful approach to this difficult metaphysical quandary that courts have wrestled with for years,” but also differing as to the crucial question of “how the function of these designs is defined.”27 Siding with the district court’s idea that cheerleading uniforms perform an informational or communicative function distinct from that of street clothes or even other athletic apparel, Judge McKeague commented:

Without stripes, braids, and chevrons, we are left with a blank white pleated skirt and crop top. As the district court recognized, the reasonable observer would not associate this blank outfit with cheerleading. This may be appropriate attire for a match at the All England Lawn Tennis Club, but not for a member of a cheerleading squad. . . . Clothing provides many functions, but a uniform at its core identifies its wearer as a member of a group. It follows that the stripes, braids, and chevrons on a cheerleading uniform are integral to its identifying function.28

The dissent relied on Jovani in this regard, erroneously citing it as taking a “narrower approach to function”—Jovani in fact defines the copyright-precluding “function” of a dress far more broadly than the statute does—and the dissent made essentially the same mistake that Jovani did in reading the statutory limitations on the word “utilitarian” out of the Act. As quoted above, the dissent would deny protection for designs on a useful article that are “integral to its identifying function”—but it made no effort whatsoever to argue that this “identifying function” is included in what Congress meant by the term “utilitarian function.” The dissent would seemingly preclude copyright for PGS works that are inseparable from any function at all, perhaps assuming that all functions of a useful article are by definition equally “utilitarian” and equally preclusive of copyright; but that is not the law Congress wrote.

The dissent took issue with the majority’s reductio ad absurdum example of a Mondrian painting as having a “decorative function” because, per the dissent, a painting is not a useful article, but the majority’s example was not arbitrary: in a decision cited by the majority, Mondrian paintings were in fact used as a basis for “Mondrian look” clothing designs by Yves St. Laurent, as the majority pointed out. Would the dissent hold these paintings to be copyrightable if hung on the wall of a gallery but not if printed on fabric used to make a dress? Or would it say “yes to the dress” but no to the use of the same artwork on uniforms? There is no support in the Act for either such distinction.

The dissent claimed, perhaps correctly, that the Varsity designs “enhance the garment’s utility” by “identify[ing] the wearer as a member of a particular cheerleading squad,” but offered no argument as to why such “identification” is not actually a matter of conveying information, which the Act explicitly places off limits when defining “utilitarian function.”29 A useful article that conveys more information about the wearer no doubt has greater “utility” than one that conveys less information, in a broad general sense of the word “utility,” but Congress has made the decision that such “utility” is not a basis for denying copyright protection for PGS works. Neither the dissent, nor the district court, nor Jovani addressed the entirety of the statute, particularly the provision that says “intrinsic utilitarian function” cannot, for copyright-preclusive purposes, extend to the “function” of looking a certain way or conveying information. The “special occasion” function of the Jovani prom dress and the “squad identifying” function the dissent recognized in the Varsity cheerleading uniforms are nothing more than that: looking a certain way or conveying information.

Conclusion

This article takes no position as to whether the particular stripes and chevrons at issue in Star Athletica would be copyrightable if printed on a piece of paper, but if they would be—as the Copyright Office concluded they were—they should not lose that protection because they are applied as decoration on a useful article, be it a lamp, a garment, or an airplane. Copyrightability should depend on authorship and originality, as the Supreme Court held in Feist Publications, Inc. v. Rural Telephone Service Co.,30 and not on the medium in which the work, or any particular copy of it, is fixed.

Although the grant of certiorari in Star Athletica came as a shock to many, given the inconclusive procedural posture of the case and the Court’s refusal to take other, seemingly more consequential copyright cases for the coming term, perhaps the Court is simply taking advantage of its unexpected hiatus from scorched-earth political combat to pull some stubborn doctrinal weeds from a small but troublesome corner of copyright law. If the result is some modest incremental clarity about useful articles and conceptual separability—indeed, if we just end up with one test instead of nine—well, we can all cheer for that. And if in some small way the above arguments help the Court articulate a test that is true to Mazer and the text of the Copyright Act, this will truly have been a useful article.

Endnotes

1. See Adam Liptak, The Right-Wing Supreme Court That Wasn’t, N.Y. Times, June 28, 2016.

2. 136 S. Ct. 1823 (2016).

3. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

4. 347 U.S. 201 (1954).

5. 17 U.S.C. §§ 1 et seq. (1909).

6. Copyright Office Announces New Policy, Am. Pat. L. Ass’n Bull., 1954. Thank you to Theresa Esquerra, Esq., for directing the author to this obscure citation.

7. 37 C.F.R. § 202.10(c) (1959) (revoked 1978) (emphasis added).

8. 17 U.S.C. §§ 101 et seq. (1976).

9. H.R. Rep. No. 94-1476, at 47, 55 (1976).

10. Esquire Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978).

11. 110 U.S.P.Q.2d (BNA) 1150, 1152 (M.D. Tenn. 2014) (citing 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 2.08[H][1]–[3] (2013)).

12. Id. at 1156.

13. Id.

14. Id. at 1150.

15. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

16. Id. at 479 (citing Skidmore v. Swift & Co., 323 U.S. 134 (1944)).

17. Id. at 483–84 (quoting U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 924.2(B) (3d ed. 2014) [hereinafter Compendium III]).

18. Id. at 487 (citation omitted) (internal alteration and quotation marks omitted).

19. Id. at 490 (citations omitted) (internal quotation marks omitted).

20. Id. at 488.

21. Id. at 491 (internal alteration and quotation marks omitted).

22. Id.

23. Id. at 492 (internal quotation marks omitted).

24. 808 F. Supp. 2d 542 (S.D.N.Y. 2011), aff’d, 500 F. App’x 42 (2d Cir. 2012).

25. Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App’x 42, 45 (2d Cir. 2012) (internal quotation marks omitted).

26. Star Athletica, 799 F.3d at 490.

27. Id. at 494–95 (McKeague, J., dissenting) (internal quotation marks omitted).

28. Id. at 495.

29. See id. at 495–96.

30. 499 U.S. 340 (1991).

Robert W. Clarida

Robert W. Clarida is a partner in the New York law firm of Reitler Kailas & Rosenblatt LLC and speaks and writes frequently on copyright law. He is the author of the treatise Copyright Law Deskbook (BNA) and a copresenter, with Thomas Kjellberg, of “Recent Developments in Copyright,” a review of copyright decisions delivered each year at the annual meeting of the Copyright Society of the USA.