Bring It On 5: Conceptual Separability (updated 5/3/16)

Varsity Brands, Inc. v. Star Athletica, LLC, No. 14-5237 (6th Cir. August 19, 2015).

The plaintiff, Varsity, makes cheerleader uniforms and has copyrighted the “two-dimensional artwork” of many of its designs, including these: 

 Sixth Circuit appeal cheerleader uniforms copyright lawsuit

The defendant, Star, also makes cheerleader uniforms. Varsity filed suit against Star after noticing that Star was advertising uniforms that resembled Varsity’s copyrighted designs. 

The question before the Sixth Circuit is whether Varsity’s designs are protectable under copyright law. This turns out to be a complex question. The Copyright Act creates a special rule for “the design of a useful article” such as clothing. The designs of useful articles are copyrightable only to the extent that “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

So, are the “pictorial, graphic, or sculptural features” of Varsity’s clothing designs separate and independent of the clothing’s “utilitarian aspects”?

The Sixth Circuit holds that even if the pictorial or graphic features of Varsity’s clothing can’t be physically separated from the clothing’s utilitarian aspects, those features are copyrightable as long as they are “conceptually separable.” But what makes something “conceptually separable”? 

To figure out whether a design is conceptually separable from an article’s utilitarian aspects, the Sixth Circuit reasons, a court must first identify what those utilitarian aspects are. But, it adds, the court must keep in mind that the Copyright Act defines a “useful article” as something that has a utilitarian function other than “convey[ing] information.” So, by statutory exclusion, the conveying of information is not a utilitarian aspect. (This statutory exclusion, as we shall see, is rather important to this case.) Once a court determines what a useful article’s utilitarian aspects are, it asks whether the “pictorial, graphic, or sculptural features” within the useful article are “objectively necessary” to carry out the article’s utilitarian aspects. If they aren’t, then they’re copyrightable.

Applying this test, the Sixth Circuit holds that the utilitarian aspects of cheerleading uniforms are “to cover the body, wick away moisture, and withstand the rigors of athletic movements.” Those aspects do not include conveying the fact that the wearer belongs to a particular team, because that would be the conveying of information—a function that, under the Copyright Act, can’t be utilitarian. And, because the pictorial or graphic features of Varsity’s uniforms are not necessary to cover the body, wick away moisture, and withstand vigorous movement, they are conceptually separable from the clothing’s utilitarian aspects. They can also exist independently, since they can be transferred to other garments. They could even be printed as abstract arta rather Warholian idea. So the designs are copyrightable.

UPDATE (5/3/16): The Supreme Court has now granted cert. I will post an update when the Court decides this case.