Clarity Needed For Garment Copyrights, Judge Says

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By Blake Brittain

Aug. 21 — Stripes, chevrons, zigzags and color block designs on a cheerleading uniform are copyrightable separately from the uniform itself, the U.S. Court of Appeals for the Sixth Circuit ruled Aug. 19.

Vacating the judgment of the U.S. District Court for the Western District of Tennessee, the Sixth Circuit ruled that the decorative elements of the uniform were separable from its utilitarian functions—to “cover the body, wick away moisture, and withstand the rigors of athletic movements”—and therefore eligible for copyright protection.

The decision adds another voice to the crowded field of garment design copyright law, as well as a dissenting opinion with a plea for help in resolving confusion about it.

In the dissent, Judge David McKeague implored Congress and the Supreme Court to provide clarity.

“The law in this area is a mess—and it has been for a long time,” McKeague said. “The majority takes a stab at sorting it out, and so do I. But until we get much-needed clarification, courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law.”

Ready? OK

Varsity Brands Inc. received copyright registrations for a number of designs used on cheerleading uniforms, including “stripes, chevrons, zigzags and color blocks.” Varsity sued Star Athletica LLC after seeing that Star was advertising cheerleading uniforms with similar designs.

Star argued that Varsity's copyrights were invalid because its designs were for useful articles, and the graphic elements of the designs were not physically or conceptually separable from the uniforms.

The district court granted Star summary judgment based on its separability argument, saying that “Variety's designs are not physically or conceptually separable from the utilitarian function of a 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.' ”

On appeal, Varsity argued that the district court did not afford enough deference to the Copyright Office's determinations of copyrightability, and that it incorrectly determined that the designs were protectable works separate from the uniforms' utilitarian aspects.

“Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks?” Judge Karen Nelson Moore asked in the first sentence of the circuit court opinion. “That is the question that strikes at the heart of this appeal.”

Some Deference to Copyright Office

The court first determined how much deference to give to the Copyright Office's decision to grant a copyright registration—whether it should be the strong deference of Chevron U.S.A. Inc. v. Natural Resources Defense Council Inc., 468 US 1227 (U.S. 1984), the lesser deference of Skidmore v. Swift & Co., 323 U.S. 134 (U.S. 1944), or no deference at all.

The court found that Skidmore deference “proportional to [the interpretations'] power to persuade” was appropriate because the Copyright Office's decisions on registration were not “rules carrying the force of law” like those entitled to Chevron deference, but that the district court erred in saying that the office's decision was “fairly easy to rebut.”

Hybrid Test

The court then turned to the question of whether Varsity's designs were copyrightable.

The court said that “the Copyright Act protects the ‘pictorial, graphic, or sculptural features' of a design of a useful article even if those features cannot be removed physically from the useful article, as long as they are conceptually separable from the utilitarian aspects of the article.”

The court said that other courts have “struggled mightily” to create a test to determine separability, noting nine different tests used in different jurisdictions. Ultimately, the Sixth Circuit created a “hybrid” of tests from other tribunals consisting of five questions:

• Is the design a pictorial, graphic, or sculptural work?

• If it is, is it a design of a useful article—“an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”?

• What are the utilitarian aspects of the useful article?

• Can the viewer of the design identify the pictorial, graphic, or sculptural features separately from the utilitarian aspects?

• Can the pictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects?


Designs Copyrightable

The court answered the first two questions of the test in the affirmative, and moved to the third question of what the utilitarian aspects of a cheerleading uniform are. The court said that these aspects were to “cover the body, wick away moisture, and withstand the rigors of athletic movements”—but not to identify the wearer as a cheerleader, as Star argued.

The court also said that Star's argument that the graphic features of the uniform were intertwined with the utilitarian aspects because they serve a decorative function was incorrect, and that “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,” the court said.

The court then turned to the fourth question: whether the viewer of the design could identify the graphic features separately from the utilitarian aspects of the uniform. The court said that the viewer could do so.

“A plain white cheerleading top and plain white skirt still cover the body and permit the wearer to cheer, jump, kick, and flip. The top and skirt are still easily identified as cheerleading uniforms without any stripes, chevrons, zigzags, or color-blocking,” the court said.

“The interchangeability of Varsity's designs is evidence that customers can identify differences between the graphic features of each design, and thus a graphic design and a blank cheerleading uniform can appear ‘side by side'—one as a graphic design, and one as a cheerleading uniform,” the court said.

Finally, the court said that the graphic designs could exist independently of the utilitarian aspects of the uniform.

“Varsity's designs ‘may be incorporated onto the surface of a number of different types of garments,' ” the court said. “This evidence establishes that the designs are transferrable to articles other than the traditional cheerleading uniform.”

The court concluded that the designs were “wholly unnecessary” to the uniform's utilitarian functions.

“Because we conclude that the graphic features of Varsity's designs ‘can be identified separately from, and are capable of existing independently of, the utilitarian aspects of [cheerleading uniforms],' we hold that Varsity's graphic designs are copyrightable subject matter,” the court said.

The court therefore granted Varsity summary judgment on the issue of the protectability of its designs, and vacated and remanded the district court's decision.

Judge Ralph B. Guy joined the majority opinion.

Concerned Dissent

In dissent, McKeague said that he agreed with the majority's general approach, but “would hold that there is no conceptual separability and that Varsity's designs are not copyrightable.”

“The particular athletic uniforms before us serve to identify the wearer as a cheerleader,” McKeague said. “Without stripes, braids, and chevrons, we are left with a blank white pleated skirt and a crop top.”

“This may be appropriate attire for a match at the All England Lawn Tennis Club, but not for a member of a cheerleading squad,” McKeague said.

McKeague also said that the decorative elements of clothing are “generally ‘intrinsic' to the overall function, rather than separable from it.”

“It follows that the stripes, braids, and chevrons on a cheerleading uniform are integral to its identifying function,” McKeague said.

Varsity was represented by Grady M. Garrison of Baker Donelson Bearman Caldwell & Berowitz PC, Memphis, Tenn. Star was represented by Michael F. Rafferty of Harris Shelton Hanover Walsh PLLC, Memphis.

To contact the reporter on this story: Blake Brittain in Washington at

To contact the editor responsible for this story: Anandashankar Mazumdar at

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