Gimme a “V” for Cheerleader Uniform Design Copyright Validity!

Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks? That is the question that strikes at the heart of this appeal.

(Opinion pdf page 2).

Varsity Brands and its affiliates registered a number of graphic design copyrights for designs appearing on the cheerleading uniforms and warm-ups they sell.  Varsity sued Star Athletica for copyright infringement for selling cheerleading gear with designs substantially similar to Varsity’s copyrighted designs.  Star Athletica argued that Varsity’s copyrights were invalid because they were unprotectable designs of useful articles.  The district court agreed with Star Athletica that Varsity’s copyright registrations were invalid, concluding that “a cheerleading uniform is not a cheerleading uniform without stripes, chevrons, zigzags, and colorblocks.”  The necessity of stripes, chevrons, zigzags and colorblocks meant that Varsity’s designs were for useful articles and not protectable by copyright.

The Sixth Circuit further refined its initial statement of the issue:    

When can the pictorial, graphic, or sculptural features that are incorporated into the design of a useful article be identified separately from, and be capable of existing independently of the utilitarian aspects of the article?

(Opinion pdf page 2).

The Sixth Circuit reversed the district court’s ruling and remanded.

The Copyright Office’s Copyrightability Determination is Entitled to Deference.

Varsity argued that the district court did not give the Copyright Office’s determination of copyrightability appropriate deference.  The Sixth Circuit agreed. 

Under 17 U.S.C. § 410(c), copyright registrations for works that are registered within five years after first publication receive a presumption of validity.  For those works, the alleged infringer bears the burden of establishing that the copyrights are invalid.  The court has the discretion of determining the evidentiary weight to be given to works that are registered more than five years after first publication.

Varsity registered three works within five years of first publication.  The district court treated the statutory presumption of validity as “fairly easy to rebut because the Copyright Office tends toward cursory issuance of registrations.”  (Opinion pdf page 9).

The Sixth Circuit discussed two different levels of deference that it could give to the Copyright Office’s decisions, Chevron deference and Skidmore deference.

Chevron deference is appropriate not only when Congress has expressly delegated authority or responsibility to implement a particular provision or fill a particular gap.

(Opinion pdf page 9).

Agency interpretations of a statute deserve respect proportional to the interpretations’ ‘power to persuade,’ otherwise known as Skidmore deference, when the agency has specialized experience and broader investigations and information available than those available to the judiciary.

(Opinion pdf page 10).

The Sixth Circuit had not previously resolved the level of deference courts must grant to copyright registration certifications.

We now hold that the Copyright Office’s determination that a design is protectable under the Copyright Act is entitled to Skidmore deference. Individual decisions about the copyrightability of works are not like rules carrying the force of law, which command Chevron deference.  Like tariff-classification rulings, which the Supreme Court held are entitled to Skidmore—not Chevron—deference, copyright registration is not a product of such formal process, or the type of process that suggests that the Copyright Office is engaging in any sort of rulemaking when issuing certificates of registration.  And, although the Copyright Office is charged with applying the Copyright Act, and therefore necessarily makes all sorts of interpretive choices, these choices are akin to tariff-ruling letters because they apply to individual applications and are conclusive only as to the application under review. Hence, we conclude that the Copyright Office’s decision to issue a certificate of copyright registration is beyond the Chevron pale.

(Opinion pdf pages 11 and 12).

The Sixth Circuit discussed the thoroughness of the Copyright Office’s consideration of Varsity’s registration applications, the validity of its reasoning and its consistency with earlier and later pronouncements.

The Copyright Office unquestionably has experience identifying useful articles and pictorial, graphic, and sculptural works. The Copyright Office publishes an internal manual that instructs its employees who are tasked with reviewing and registering copyrights how to apply the relevant provisions of the Copyright Act uniformly.  In addition, the evidence in the record suggests that the Copyright Office consistently applied the same interpretation of separability to Varsity’s numerous designs like the ones at issue in this case, which Varsity successfully registered with the Copyright Office.  Comparison between the designs at issue in this case and the other Varsity registered designs confirms that the Copyright Office consistently found the arrangements of stripes, chevrons, and color-blocking to be original and separable from the utilitarian aspects of the articles on which they appear, and therefore copyrightable.  Not only do the letters demonstrate that the Copyright Office has interpreted the Copyright Act consistently, they also demonstrate that the Copyright Office has grounded its decisions to register Varsity’s designs in the text of the statute using sound legal reasoning. Finally, the Copyright Office’s expertise in identifying and thinking about the difference between art and function surpasses ours.

Thus, the district court erred by failing to give greater deference to the Copyright Office’s registration determinations. This is not to say that the presumption of validity is irrebuttable. It is not.  Star must bear the burden to overcome the presumption. We turn now to address whether Star has done so here.

(Opinion pdf pages 12 – 13).

 

The Copyright Act protects pictoral, graphic and sculptural works.  §102(a). 

Under the §101 definitions,

The design of a useful article shall be considered a pictorial, graphic, or sculptural work, and thus copyrightable, only if, and 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. A useful article is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.

Determining whether an article is protectable requires a two part analysis:  1) is the design for which the author seeks copyright protection a design of a useful article, and if so, 2) does the design of the useful article incorporate pictorial, graphic or sculptural features that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the useful article.

The second part of the analysis tests the “separability” of the pictorial, graphic or sculptural features of the useful article.

Physical separability and conceptual separability are the two kinds of separability.  Can the pictorial, graphic or sculptural features be physically separated from the article, leaving the utilitarian aspects of the article completely intact?  Can a feature of a useful article be clearly recognizable as a pictorial, graphic or sculptural work, even though it can’t be physically separated from the article?

The Sixth Circuit had not previously adopted an approach to determine whether the pictorial, graphic or sculptural features of the design of a useful article are separable from the utilitarian aspects of a useful article.  Who knew that a case about cheerleader uniforms would lead to two questions of first impression?

We hold 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.

(Opinion pdf page 17).

The Sixth Circuit went on to describe the decision making process it adopted.

We believe the best approach to determining whether a design is a copyrightable pictorial, graphic, or sculptural work is to ask a series of questions that are grounded in the text of the Copyright Act: (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—an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information? If the design is not the design of a useful article, then there is no need to inquire into whether there are pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the useful article.

Before addressing separability, a court should ask: (3) What are the utilitarian aspects of the useful article? For example, the utilitarian aspect of a chair is to provide a place for a person to sit. Portraying the appearance of the useful article and conveying information are two utilitarian aspects that courts may not use to determine whether pictorial, graphic, or sculptural features are separable. We believe that considering these two functions’ utilitarian aspects in addition to an article’s other utilitarian functions for the purpose of determining the separability of a graphic design would be at odds with the Copyright Act’s definition of what makes an article a useful article.

Once we have identified permissible utilitarian aspects, we ask the final two questions that have to do with separability. (4) Can the viewer of the design identify pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? If the viewer cannot identify pictorial, graphic, or sculptural features within the design of the useful article, then the design of the useful article is not copyrightable. (5) Can the pictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?  The objectively necessary approach is useful to answer this final question. If the pictorial, graphic, or sculptural features of the design of the useful article are not required by the useful article’s utilitarian functions or are wholly unnecessary to performance of the utilitarian function of the useful article, then the pictorial, graphic, or sculptural features are not dictated by the function of the useful article, and therefore can exist without the useful article.  The design process approach may also help courts determine whether a design feature is necessary to the utilitarian aspects of the article because the designer’s testimony may offer clues as to which components of the design are essential to the functionality of the useful article.  But we do not endorse the design-process approach in its entirety. Finally, the Copyright Office has provided a helpful way to think about answering questions four and five: the pictorial, graphic, and sculptural features incorporated into the design of a useful article are conceptually separable if the artistic feature of the design and the useful article could both exist side by side and be perceived as fully realized, separate works—one an artistic work and the other a useful article. If the viewer of a design can imagine the pictorial, graphic, or sculptural features of the design of a useful article as an artistic work, then those features are separately identifiable and can exist independently.

(Opinion pdf pages 22 – 24).

The Sixth Circuit applied these questions to Varsity’s designs.

1.  Pictorial, graphic or sculptural works?  The Sixth Circuit ruled that Varsity’s designs are two-dimensional works of graphic art.

2.  Designs of useful articles?  The Sixth Circuit ruled that Varsity’s designs are cheerleading uniform and sportswear designs that have an intrinsic utilitarian function that is not merely to portray the appearance of clothing or to convey information.

3.  What are the utilitarian aspects of cheerleading uniforms?  The Sixth Circuit determined that the utilitarian functions of the uniforms are covering the body, wicking away moisture and withstanding the rigors of athletic movements.  The Sixth Circuit rejected Star Athletica’s argument that the pictorial, graphic or sculptural features are inextricably intertwined with the utilitarian aspects of the cheerleading uniform because the pictorial, graphic or sculptural features serve a decorative function.  The Sixth Circuit thought such a ruling would make nearly all artwork unprotectable.

4.  Can pictorial, graphic or sculptural features be separately identified from the design aspects of covering the body, wicking away moisture and withstanding the rigors of athletic movements?  Yes.  The graphic features of Varsity’s designs are the arrangements of stripes, chevrons, zigzags and color blocks.

5.  Can the arrangement of stripes, chevrons, color blocks, and zigzags exist independently of the utilitarian aspects of a cheerleading uniform?  Yes.  The evidence presented indicated that Varsity’s various graphic elements could be incorporated onto the surface of a number of different types of garments, so that the designs are transferable to articles other than traditional cheerleading uniforms.

In addition, the interchangeability of Varsity’s various designs is evidence that the graphic design on the surface of the uniform does not affect whether the uniform still functions as a cheerleading uniform. Indeed, nothing (save perhaps good taste) prevents Varsity from printing or painting its designs, framing them, and hanging the resulting prints on the wall as art. We therefore conclude the arrangement of stripes, chevrons, color blocks, and zigzags are wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement, and wick moisture.

(Opinion pdf page 28).

The Sixth Circuit held that Varsity’s graphic designs are copyrightable subject matter.  The Sixth Circuit further held that the graphic features of Varsity’s cheerleading uniform designs are more like fabric design (copyrightable) than dress design (not copyrightable).  The Sixth Circuit entered summary judgment for Varsity solely on the issue of the protectability of Varsity’s designs as pictorial, graphic or sculptural works.

This case is Varsity Brands, Inc. v. Star Athletica, LLC, No. 14-5237, Sixth Circuit Court of Appeals.

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