On August 19, 2015, in a 2-1 majority opinion, the Sixth Circuit weighed in on the level of deference due to the Copyright Office’s determinations of registrability, as well as the proper approach to determining whether pictorial, graphic, or sculptural features can be identified separately from the utilitarian aspects of a useful article.

Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashion & Supplies, Inc. (collectively “Varsity”) design and manufacture apparel for cheerleading and other athletic activities.  Varsity obtained copyright registrations for “two-dimensional artwork” for many of its designs, including the following:

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Varsity filed suit against Star Athletica, LLC alleging copyright infringement after seeing Star’s advertisements for cheerleading uniforms that allegedly looked like Varsity’s five registered designs.

On summary judgment, Star argued that Varsity’s copyrights are not valid because: (1) the designs are for useful articles, which are not copyrightable; and (2) the pictorial, graphic, or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms, making them ineligible for copyright protection.  The district court agreed, holding that the aesthetic features of a cheerleading uniform merge with its functional purpose.

On appeal, Varsity challenged the summary judgment ruling on three grounds: (1) the district court did not afford the proper deference to the Copyright Office’s determination of copyrightability; (2) the district court used the wrong approach to determine whether a design is a protectable pictorial, graphic, or sculptural work that is separable from the utilitarian aspects of the article; and (3) Varsity’s designs are copyrightable as a matter of law because they are graphic works and not useful articles.

The Level of Deference Due To A Presumptively Valid Copyright Registration

Because they met certain statutory requirements, three of Varsity’s copyright registrations were presumptively valid.  The district court, however, treated that statutory presumption as “fairly easy to rebut because the Copyright Office tends toward cursory issuance of registrations.”  The Sixth Circuit held that the district court erred by failing to give greater deference to the Copyright Office’s registration determinations.

According to the Sixth Circuit, the Copyright Office’s determinations should not be given the highest level of deference—or Chevron deference.  Rather, they should be given the “power to persuade,” orSkidmore deference.  This level of deference is appropriate both because individual decisions about the copyrightability of works do not carry the force of law and because they are not the product of a process-like rulemaking (e.g., agency-promulgated regulations).  Rather, they are conclusive only to individual applications.  The Sixth Circuit further noted that the level of deference depends on “the thoroughness evident in [the agency’s] consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking the power to control.”

Here, the Sixth Circuit found that the Copyright Office: (1) has experience identifying useful articles and pictorial, graphic, and sculptural works; (2) publishes an internal manual instructing employees how to apply the provisions of the Copyright Act uniformly; (3) consistently applied the same interpretation of separability to Varsity’s numerous designs and consistently found the arrangements of stripes, chevrons, and color-blocking to be original and separable from the utilitarian aspects of the articles; and (4) has greater expertise than courts in identifying and thinking about the difference between art and function.

Separability of Varsity’s Designs

The Sixth Circuit identified numerous approaches used to analyze the question of separability and adopted a hybrid approach, which asks and answers the following questions.

Question One: Are Varsity’s designs pictorial, graphic, or sculptural works?  Yes, according to the majority.  Varsity received copyright registrations for “two-dimensional works of  . . . graphic . . . art.”

Question Two: Are Varsity’s designs useful articles?  Yes, according to the majority.  Cheerleading uniforms and sportswear have an “intrinsic utilitarian function that is not merely to portray the appearance of [clothing] or to convey information.”

Question Three: What are the “utilitarian aspects” of cheerleading uniforms?  According to the majority, the functions of cheerleading uniforms are to “cover the body, wick away moisture, and withstand the rigors of athletic movements.”  The majority rejected Star’s argument that a utilitarian aspect of cheerleading uniforms is to identify the wearer as a cheerleader because the Copyright Act defines a “useful article” as one whose utilitarian function is “not merely to . . . convey information.”  Further, the majority rejected Star’s argument that the designs’ “decorative function” is a utilitarian aspect of a cheerleader uniform because such a holding would render nearly all artwork unprotectable—for example, a painting would be unprotectable because the painting decorates the room in which it hangs.

Question Four: Can the viewer identify pictorial, graphic, or sculptural features separately from the parts of the design that cover the body, permit free movement, and wick moisture?  The majority answered yes, and identified the arrangement of stripes, chevrons, zigzags, and color blocking as such graphic features.  The majority rejected the district court’s ruling that a cheerleading uniform is not recognizable as a cheerleading uniform without team colors, stripes, and similar designs for three reasons: first, a plain white cheerleading uniform still covers the body and permits the wearer to cheer, jump, kick, etc.  Second, the top and skirt are still identifiable as cheerleading uniforms without any stripes, chevrons, zigzags, or color blocking.  Third, not all cheerleading uniforms must look alike to be cheerleading uniforms.

Question Five: Can the arrangement of stripes, chevrons, color blocks, and zigzags exist independently of the utilitarian aspects of a cheerleading uniform?  The majority found that they could because Varsity’s designs may be incorporated onto the surface of a variety of garments, including cheerleading uniforms, practice wear, t-shirts, jackets, and others.

Because it found the graphic features of the cheerleading designs separable from the utilitarian aspects of the uniform, the Sixth Circuit majority granted Varsity summary judgment on the issue of the copyrightability of the designs.

Dissenting, Judge McKeague agreed with the majority’s general approach to separability, but would have held that the designs are not copyrightable.  Finding that the design enhances the uniform’s utility by identifying the wearer as a cheerleader, Judge McKeague called for either Congress or the Supreme Court (or both) to clarify copyright law with respect to copyright design, stating:

Ultimately, this case turns on how function is defined.  How broadly should courts define the function of an article of clothing?  Should they define it at its most basic function, to cover the body?  Should they define it broadly, as the majority does in this case, as wicking away moisture and “permit[ting] the wearer to cheer, jump, kick, and flip?”  Or should they define it more particularly, in relation to its specific purpose—as identifying the wearer as a cheerleader? . . . I submit that the more particularized assessment is more sensible and consonant with the purposes of the law.

The case is Varsity Brands, Inc. v. Star Athletica, LLC, Case No. 14-5237 (6th Cir. Aug. 19, 2015)