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Sixth Circuit Reversal in Varsity Brands v. Star Athletica

By Barry Werbin

In a significant decision, on August 19th, the Sixth Circuit in Varsity Brands v. Star Athletica reversed the WD Tenn.'s widely criticized decision that had held that stripes, chevrons, zigzags and color blocking imprinted on cheerleader uniforms were not copyrightable because these design elements could not be disaggregated from the cheerleader dress design, which were otherwise utilitarian. That is, the District Court found that the aesthetic features of a cheerleading uniform merge with the functional purpose of the uniform.

The Circuit Court addressed what it characterized as "the question that has confounded courts and scholars: 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[?]'"

In reversing, the Court granted partial summary judgment for Varsity on the issue of whether Varsity's designs were copyrightable pictorial, graphic, or sculptural works, holding they were, because the design elements could exist independently of the utilitarian aspects of the cheerleading uniforms, thus qualifying as copyrightable subject matter.

First, the Court gave deference to the registrations that had been issued by the Copyright Office, finding that a "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."

Second, in expressly upholding the "conceptual separability" doctrine, the Court held 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." After summarizing various approaches to assessing conceptual separability, particularly from the Second and Fourth Circuits, the Court adopted a "hybrid approach" that asks a series of questions to initially segregate utilitarian elements of a work, followed by an assessment as to whether viewers can identify "'pictorial, graphic, or sculptural features ... separately from . . . the utilitarian aspects of the [useful] article....'" Finally, there must be an assessment of whether the "features" of the design of the useful article "'exist[] independently of[] the utilitarian aspects of the [useful] article.'"

Ultimately, the Court deemed the designs as "more like fabric design than dress design," emphasizing that Varsity's graphic designs do not "enhance the [cheerleading uniform's] functionality qua clothing" and that "[t]he top and skirt are still easily identified as cheerleading uniforms without any stripes, chevrons, zigzags, or color-blocking." Evidence further supported the conclusion that the "designs are transferable to articles other than the traditional cheerleading uniform" and were "interchangeable." The Court concluded that "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" and are therefore copyrightable subject matter.

A copy of the decision is available here:Varsity Brands app decision.pdf

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This page contains a single entry from the blog posted on August 21, 2015 9:48 AM.

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