On Monday, the Supreme Court announced it had agreed to review the Sixth Circuit’s copyright decision in Star Athletica v. Varsity Brands, which involves the issue of whether certain designs appearing on cheerleading uniforms are copyrightable or are instead non-copyrightable functional elements that are an inherent part of cheerleading uniform designs. In a split decision, the Sixth Circuit Court of Appeals reversed the district court and ruled that the use of “stripes, chevrons and color blocks” were copyrightable despite the Copyright Act’s prohibition against extending copyright protection to “useful articles.” Though the majority and dissent disagreed on whether these design elements were copyrightable, both seemed to agree that in light of the different and sometimes conflicting approaches adopted by various courts of appeal for distinguishing between an object’s utilitarian and copyrightable elements, “the law in this area is a mess” and intervention by the Supreme Court is necessary.

The Varsity Brands case presents the issue of distinguishing between copyrightable and utilitarian elements in the already controversial context of dress and fabric designs. Courts have long struggled over whether a garment’s decorative elements serve purely ornamental functions or enhance and become indistinguishable from the garment’s utilitarian function of serving as appropriate attire for a particular purpose or occasion. Star Athletica’s petition for certification focused on the need for direction as to which of at least 10 tests used by courts and commentators should be applied. However, the Sixth Circuit’s majority and dissenting opinions illustrate that whether a particular design feature will be found to be copyrightable largely turns on two issues: (1) how the garment’s “function” is defined and (2) how strictly courts will enforce the Copyright Act’s requirement that in order to be copyrightable, the nonutilitarian design feature must be “separable from and . . . capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101 (definition of “pictorial, graphic, and sculptural works.”).

A “useful article” is defined by the Act as one that “has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U.S.C. § 101. The Sixth Circuit’s opinion illustrates just how important it is to identify the “function” of the article. The majority’s analysis adopted a limited definition of a cheerleading uniform’s utilitarian function, which was simply to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” Based on this view of the garment’s function, the majority had little difficulty concluding that the defendants’ arrangement of stripes, chevrons and color blocks did not contribute to the garments’ functional attributes and, therefore, were merely ornamental elements subject to copyright protection.

By contrast, the dissent insisted that the garment’s utilitarian function was to identify the wearer as a cheerleader and that the defendant’s use of these standard design features merely served the utilitarian function of identifying the garment as a cheerleading uniform as distinct from some other type of clothing. The Varsity Brands case raises the issue of whether a useful article’s functional elements are to be determined based solely on an assessment of the article’s functional capabilities or in terms of how the article is actually used, which includes considerations of the article’s broader social or cultural significance.

The importance of correctly framing the “function” portion of the analysis cannot be overstated as it largely shapes the outcome of the separability analysis: As the majority and dissenting opinions in Varsity Brands show, the outcome of the separability analysis tends to vary depending on how narrowly or broadly the court defines the object’s “utilitarian function.” The more narrowly courts define the object’s utilitarian functions, the more likely they are to find that the object contains copyrightable elements. Conversely courts are less likely to find copyrightable elements where the object is perceived as having multiple or higher-level functions (i.e., clothing that does not merely cover the body but does so in a particular way that is socially recognizable). This tension is succinctly summarized by comparing two Second Circuit opinions, Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005) and Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F.App’x 42,44 (2d Cir. 2012). In Chosun, the Second Circuit found that animal costumes were not “useful articles,” and thus particular features were potentially copyrightable. By contrast, in Jovani the Second Circuit found that beading and other exterior features of prom dresses were not copyrightable because they “serve[] a ‘decorative function,’ so that the decorative elements of clothing are generally ‘intrinsic’ to the overall function, rather than separable from it.” Jovani, at 45. In other words, a design feature is not “functional” when it appears on a garment that the court finds is not a “useful article,” such as masquerade costumes, but is “functional” when the decoration is affixed to garments that courts determine to have some functional purpose beyond merely covering the body, such as prom dresses. In either case, the copyrightability decision is being made not on the basis of an analysis of the expressive nature of the work that a party seeks to copyright, but on whether that work is perceived to contribute to the object’s utilitarian functions.

The problem with hitching assessment of an article’s “function” to its cultural impact is that culture morphs and shifts all the time. What, for example, is the function of army-issued camouflage? To soldiers in the field, its utilitarian function is to obscure the soldier from the view of the enemy. Camouflage patterns would therefore appear to have little chance of copyright protection, because the pattern is so closely tied to its function. What happens to the exact same jacket, however, when it is co-opted by a ’70s punk rocker and worn as a fashion statement? What too becomes of an ordinary household clock when a rap artist drapes it around his neck as jewelry? Or of a porcelain urinal when Marcel Duchamp installs it in an art museum? While these might seem like extreme examples, the point is that allowing an object’s “functional elements” to vary based on the social or cultural context in which the article is used, rather than on a more “practical” assessment of the article’s utilitarian functions, is necessarily more subjective and injects a greater uncertainty into an already problematic area of copyright law.

In addition to identifying an article’s functional elements, courts must also determine whether the ornamental elements are separable from or exist independently of the article’s utilitarian elements. 17 U.S.C. § 101. Once again, the majority and dissent took very different approaches to this issue. The majority insisted that the designs satisfied the separability test because they did not “enhance the [cheerleading uniform’s] functionality qua clothing.” The dissent responded by pointing out that unlike the placement of an artistic work, such as imprinting a Mondrian color block poster on a T-shirt, the Mondrian artwork exists independently as a work of art. By contrast, the dissent argued that the stripes, chevrons and color blocks used by Varsity Brands had no independent existence as artwork since their only purpose was to enhance the garment’s functional purpose of identifying the garment as a cheerleading uniform.

Unfortunately, other than making clear that copyright protection does not extend to a useful article’s “intrinsic utilitarian function,”1 the Copyright Act offers scant guidance on how courts are supposed to distinguish between a useful article’s functional, utilitarian elements and purely ornamental elements that satisfy the “separability” requirement. While this lack of guidance helps explain the proliferation of different tests or approaches championed by various commentators and courts of appeal, it also highlights the challenges the Supreme Court faces having decided to wade into in what the petitioner calls “the single most vexing, unresolved question in all of copyright.” If the Copyright Act offers so little guidance, and in the absence of congressional action, what kind of guidance can the Supreme Court reasonably provide?

We think the Court can provide the necessary guidance, though we think that guidance will be more in terms of explaining how courts should frame the relevant inquiries as opposed to providing a single all-encompassing test for deciding these issues. More specifically, we believe the Supreme Court can provide necessary guidance on:

  • First, the Supreme Court can clarify the factors courts may consider in determining a utilitarian object’s functional elements. Specifically, the Court should make clear whether the article’s function is to be assessed by virtue of the product’s practical usefulness or by the social or cultural context in which it is used. The Varsity Brands case offers a great opportunity for the Court to clarify the extent to which elements of a garment that contribute to its “social function” – by identifying the garment as suitable for a recognizable purpose – are part of the utilitarian object’s “functional” elements.
  • Second, the Court should clarify any additional public policy that can guide courts in difficult cases. For example, when assessing the affirmative defense of fair use, the Copyright Act directs courts to consider a variety of factors, including the impact of the use on the market. 17 U.S.C. 107. Should courts likewise consider factors such as whether the use is for commercial or noncommercial purposes or the effect on competition within the marketplace if the design is considered copyrightable?
  • Third, the Court should use this case as an occasion to further clarify the line separating where copyright law ends and patent and design patent law begins.
  • Fourth, the Court should clarify the “separability” requirement. Will ornamental designs on garments be entitled to copyright protection if they would not independently exist as a separate work of art, as with the Mondrian block print example? To the extent the Court permits more “abstract” or “conceptual” forms of “separability,” the Court will need to make clear the limits of such an approach.

The Varsity Brands case implicates much more than designs on cheerleading uniforms. This is one of those rare copyright cases that contains not only persuasive arguments on both sides, but also a potential outcome that could well have a significant impact on competition affecting a broad range of industries. It will be interesting to see how many amicus groups file briefs with the court, and where they line up on broadening or narrowing the scope of copyright protection as applied to features of useful articles.