Case(s): Varsity Brands et al v. Star Athletica — United States District Court for the Western District of Tennessee Western Division – Case No. 10-2508; United States Court of Appeals for the Sixth Circuit – Case No. 14-5237.

Facts: Varsity Brands (“Varsity”) is one of the largest designers and manufacturers of cheerleading and design uniforms. Varsity employs designers to create two-dimensional designs, some of which are incorporated onto the surface of cheerleading uniforms.

Varsity registered five cheerleading uniform designs with the Copyright Office. For three of these designs, Varsity submitted a sketch of the uniform as deposit material and the nature of the work and authorship is listed as “2-dimensional artwork.” For the remaining two uniforms, Varsity submitted a photograph of a completed uniform incorporating the design as deposit material, the nature of the work is listed as “fabric design (artwork)” and the nature of authorship is listed as “2-dimensional artwork.”

Star Athletica (“Star”) markets and sells various sports apparel, including cheerleading goods and uniforms. In 2010, Star published a catalogue advertising its designs for cheerleading uniforms, which included cheerleading uniforms that looked a lot like Varsity’s.

Upon learning of Star’s catalog, Varsity sued, claiming that Star copied, reproduced, displayed, and distributed infringing images of its designs in its 2010 catalog and internet website, and that it infringed on Varsity’s copyrights by incorporating the designs onto the surface of Star’s cheerleading uniforms. Varsity also claimed that pictures of cheerleading models wearing a selection of different styles of cheerleading uniform infringed its copyrights.

Star countered that Varsity did not hold valid copyrights and moved for summary judgment.

United States District Court for the Western District of Tennessee

In 2014, District Judge Robert Cleland agreed with Star. Judge Cleland found that the designs and colors placed on cheerleading uniforms produced and designed by Varsity could not be conceptually or physically separated from the cheerleading uniforms themselves.

On conceptual separability, Judge Cleland found that the uniform designs did not “invoke any concept other than that of clothing.” Similarly, with respect to physical separability, Judge Cleland held that “removing the lines, patterns, and chevrons from the actual physical garments at issue in this litigation and placing them on a different canvas does not remove their association as cheerleading uniforms.”

As a result, Judge Cleland held that Varsity could not maintain its claims against Star for copyright infringement.

United States Court of Appeals for the Sixth Circuit

Varsity appealed the district court’s decision.

On August 19, 2015, the U.S. Court of Appeals for the Sixth Circuit reversed the lower Court’s decision, ruling that the decorative designs on a cheerleading uniform are copyrightable. Judge Moore, writing for the majority, found:

“To the extent that Star contends that pictorial, graphic, or sculptural features are inextricably intertwined with the utilitarian aspects of a cheerleading uniform because they serve a decorative function […] we reject that argument. Such a holding would render nearly all artwork unprotectable. Under this theory of functionality, Mondrian’s painting would be unprotectable because the painting decorates the room in which it hangs. But paintings are copyrightable.”

 Analysis: The Sixth Circuit first considered what level of deference is owed to the Copyright Office, since Varsity had successfully registered all five of the designs at issue in the case. The court looked at what’s known as Chevron deference, which is appropriate when Congress has expressly or impliedly delegated the power to an agency. And also Skidmore deference, which is appropriate when an agency has “specialized experience.”

The Sixth Circuit held that the Copyright Office’s determination to issue copyright protection to five of Varsity’s designs was entitled to Skidmore deference.  Even though the Copyright Office’s decision to register Varsity’s designs did not carry the power of law, the Sixth Circuit found that the Copyright Office’s “expertise in identifying and thinking about the difference between art and function” surpassed the court’s expertise in such matters.

Next, the court determined whether or not the designs were protectable. The court acknowledged that cheerleading uniforms are useful articles, which means that in order for them to be copyrightable, there must be pictorial, graphic, or sculptural features that can be separated from the utilitarian aspects.

The Sixth Circuit found that the best test to determine separability is a five-question inquiry: (1) Is the design a pictorial, graphic, or sculptural work? (2) If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article? (3) What are the utilitarian aspects of the useful article? (4) Can the viewer of the design identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? (5) Can the pictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?

The Sixth Circuit then applied this test to Varsity Brands’ designs, answering the first two questions in the affirmative. With respect to question three, the court held that the uniforms’ purpose was to “cover the body, wick away moisture, and withstand the rigors of athletic movements.”

The court then addressed the severability of the designs from the utilitarian aspects of the cheerleading uniforms.  The court held that the designs did not in any way “enhance the cheerleading uniform’s functionality qua clothing.” Cheerleaders could, after all, perform all the activities necessary for cheerleading even if the uniform was devoid of designs. The court went on to find that the uniforms would still be “easily identified as cheerleading uniforms without any stripes, chevrons, zigzags, or color-blocking.”

Finally, the court addressed whether Varsity Brands’ designs could exist separately from the cheerleading uniforms.  It was found that they could, pointing out that “Varsity’s designs ‘may be incorporated onto the surface of a number of different types of garments, including cheerleading uniforms, practice wear, t-shirts, warm-ups, and jackets, among other things.’”

Ongoing: After Star lost in the Sixth Circuit, the company asked for an en banc rehearing, which means a hearing before the entire bench. This was denied. Star has indicated that it will ask the Supreme Court to weigh in.

Conclusion: The concept of separability in copyright law often confuses scholars as well as courts. This case is notable because the Sixth Circuit created a new five-part test in order to reach its decision. And if the Supreme Court accepts the case, there’s the possibility that the High Court will provide clarity on this area of law.