On May 2, 2016, the Supreme Court granted certiorari from the United States Court of Appeals for the Sixth Circuit to resolve a multi-circuit split over “the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act.” Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2016 WL 98761, at *1 (U.S. May 2, 2016); Petition for a Writ of Certiorari, Star Athletica, L.L.C. v. Varsity Brands, Inc., (No. 15-866) (U.S. petition for cert. filed Jan. 5, 2016), 2016 WL 94219, at *i. Although the specific question in Varsity Brands concerns the copyright protection afforded to designs on cheerleading uniforms, the broader question of when a design feature of a useful article is subject to copyright protection is long considered one of the most vexing questions in copyright law, and the Supreme Court’s decision could fundamentally alter the intellectual property landscape for numerous business sectors, including the $330 billion per-year fashion industry.

The legal background of the dispute in Varsity Brands is the limited scope of copyright protection that applies to articles that have a utilitarian function. To enjoy copyright protection, “an original work[] of authorship” must fall within one of the subject matters enumerated in 17 U.S.C. § 102, which generally exclude articles that have a utilitarian function. However, the pictorial, graphic, or sculptural features of an article may be protectable to the extent they “can be identified separately from, and are capable of existing independently of,” the article’s utilitarian aspects. 17 U.S.C. § 101. The question of whether such features are entitled to copyright protection is determined by the “conceptual separability” test, which considers whether an article’s aesthetic and utilitarian elements are separable. As illustrated in Varsity Brands, this question has proven very elusive to answer given the many different ways that courts approach it.

In Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015), Varsity Brands, Inc. brought suit against Star Athletica, LLC, alleging that Star Athletica’s cheerleading uniforms infringed its copyrights. Varsity Brands’ copyrights consisted of “two-dimensional artwork” sketches depicting stripes, chevrons, zigzags, and color blocks on cheerleading uniforms. Id. at 471. The district court granted summary judgment for Star Athletica on its infringement claims, holding that Varsity’s designs were not conceptually separable from the utilitarian function of “cloth[ing] the body in a way that evokes the concept of cheerleading.” Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *8-9 (W.D. Tenn. Mar. 1, 2014).

On appeal, to analyze Varsity Brands’ infringement claim, the Sixth Circuit first determined the appropriate conceptual separability test to apply. While all courts that have addressed whether useful articles are entitled to copyright protection employ some form of the conceptual separability test, many unique versions of the test exist, resulting in substantial inconsistencies in the results that courts have reached. To wit, the Sixth Circuit noted nine distinct ways for determining if a pictorial, graphic, or sculptural feature qualifies as copyrightable subject matter:

  1. The Copyright Office’s approach considers whether the aesthetic feature and useful article could “exist side by side and be perceived as fully realized, separate works—one an artistic work and the other a useful article.” Compendium of U.S. Copyright Office Practices § 924.2(B) (3d ed. 2014).
  2. The “Primary-Subsidiary” approachconsiders whether the aesthetic feature is primary to the article’s subsidiary utilitarian function. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980)
  3. The “Objectively Necessary” approachconsiders whether the aesthetic feature is necessary to the performance of the article’s utilitarian function. Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985).
  4. The “Ordinary-Observer” approach considers whether the article stimulates in an observer’s mind “a concept that is separate from the concept evoked by its utilitarian function.” Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J., dissenting).
  5. The “Design-Process” approachconsiders whether design elements of the article reflect the designer’s artistic judgment exercised independently of functional influences. Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).
  6. The “Stand-Alone” approachconsiders whether the useful article’s functionality remains intact when the copyrightable material is separated. Pivot Point Int’l, Inc. v. Charlene Products, Inc., 372 F.3d 913, 934 (7th Cir. 2004) (Kanne, J., dissenting).
  7. The “Likelihood-of-Marketability” approach considers whether there is a substantial likelihood that “even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.” Galiano v. Harrah’s Operating Co., 416 F.3d 411, 419 (5th Cir. 2005) (quoting 1 Nimmer on Copyright § 2.08[B][3]).
  8. Patry’s approach considers whether the aesthetic feature can be identified separately from the article’s utilitarian aspects, and is capable of existing as an intangible feature independent of those aspects. 2 Patry on Copyright § 3:146. If the form or function of the article’s utilitarian aspects dictate the way that the pictorial, graphic, or sculptural work appears, it is incapable of independent existence. Id. Patry’s approach emphasizes that an article’s aesthetic features must be separable from its utilitarian aspects, but not from the article itself. Id.
  9. The “Subjective-Objective” approachconsiders the degree to which the designer’s subjective process was influenced by aesthetic as opposed to functional concerns, and whether the article’s design was objectively dictated by its utilitarian function. Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separability in American Copyright Law, 69 Ohio St. L.J. 109, 141 (2008).

Surveying the aforementioned tests, the Sixth Circuit combined several approaches in formulating its own five question conceptual separability test: “(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?” Varsity Brands, 799 F.3d at 487. Of note, the Sixth Circuit held that “[p]ortraying the appearance of the useful article” and “conveying information” are two utilitarian functions that courts may not use to determine conceptual separability. Id. at 487 (quoting 17 U.S.C. § 101) (alterations omitted). Once the article’s utilitarian aspects are established, the Sixth Circuit’s test then requires an inquiry into (4) whether those aspects can be identified separately from the article’s aesthetic aspects, and (5) whether the article’s aesthetic features can exist independently of the utilitarian aspects. Varsity Brands, 799 F.3d at 488. The Sixth Circuit also noted that the Copyright Office’s approach to conceptual separability would be helpful to answer questions (4) and (5), and that the Objectively Necessary and Design-Process approaches could help to answer question (5). Id. at 488-89.

Applying its newly crafted test, the Sixth Circuit reversed the district court and held that the graphic features of Varsity Brands’ sketches were conceptually separable from the utilitarian aspects of cheerleading uniforms and thus qualified as copyrightable subject matter. Id. at 492. To reach this conclusion, the court answered question (3) of its test by holding that the utilitarian function of cheerleading uniforms is to “cover the body, wick away moisture, and withstand the rigors of athletic movements,” but not, as Star Athletica argued, to identify the wearer as a cheerleader. Id. at 490. Identifying the wearer, the Sixth Circuit reasoned, was a function that merely conveyed information and could not be considered for purposes of determining separability. Id. The Sixth Circuit also rejected Star Athletica’s argument that the “decorative function” of the uniforms was utilitarian, because such a holding “would render nearly all artwork unprotectable.” Id. The Sixth Circuit listed numerous works that enjoy copyright protection despite serving a decorative function, such as paintings, designs on laminate flooring, and fabric designs, and concluded that the presence of a decorative function does not defeat conceptual separability. Id.

On questions (4) and (5) of its test, the Sixth Circuit held that the graphic features of Varsity Brands’ designs—“the arrangement of stripes, chevrons, zigzags, and color-blocking”—could exist and be identified separately from the three features it had deemed utilitarian in question (3), namely the cheerleading uniform’s capacity to cover the body, wick away moisture, and withstand athletic movements. Id. at 491. The court reasoned that Varsity Brands’ designs did not enhance these particular functions and, to the contrary, evidence showed that the designs were transferable to other articles of clothing or among cheerleading uniforms. Id. Employing the “Objectively Necessary” approach, the Sixth Circuit concluded that the designs were “wholly unnecessary” to the cheerleading uniforms’ utilitarian functions and thus conceptually separable. Id. at 492 (quoting Carol Barnhart, 773 F.2d at 419).

The outcome of Varsity Brands turned not on the particular separability test employed, but on “how function is defined,” as the dissent noted. Varsity Brands, 799 F.3d at 496 (McKeague, J., dissenting). Indeed, the dissent agreed with the majority’s approach, but argued that the utilitarian function of a cheerleading uniform is to “identify the wearer as a member of a particular cheerleading squad.” Id. at 494-95. Having defined function differently from the majority, the dissent would have concluded that the graphic features of Varsity Brands’ designs were not conceptually separable from their utilitarian aspects. Id. at 495.

The Supreme Court’s decision in Star Athletica will likely establish a uniform conceptual separability test that, hopefully, will clarify the intellectual property status of useful articles across many industries. The Court is also likely to provide guidance concerning the aspects of clothing that can properly be considered “utilitarian.” If the Supreme Court follows the Sixth Circuit, copyright protection for fashion designs would expand significantly because two functions of clothing—portraying its appearance and conveying information—would be broadly excluded from such aspects. Accordingly, the fashion and other industries that are affected by the status of intellectual property rights relating to clothing designs are watching the Supreme Court’s decision closely.