Tuesday 20 September 2016

Cheering for a much-anticipated Supreme Court opinion on conceptual separatibility

The Supreme Court of the United States will hear next month the arguments of both parties in the Star Athletica, LLC v. Varsity Brands, Inc. case, which is closely monitored by copyright attorneys, but also by fashion designers, as its outcome may help, or hinder, their ability to protect their designs.

The case is about cheerleading uniforms, which the two parties, Star Athletica and Varsity both manufacture and sell. Varsity alleged that Star Athletica had copied some of its designs and sued its competitor for copyright infringement. The District Court held in favor of Star Athletica, finding Varsity's designs not copyrightable because their graphic elements were not physically or conceptually separable from the utilitarian function of a cheerleading uniform. For the court, the colors, stripes, and chevrons featured on the designs are usually associated with cheerleading uniforms. Therefore, they are what makes the uniforms recognizable as a cheerleading uniforms.

Hold on… Conceptual separatibility? What is it?

A “useful article” is not protected by U.S. copyright, 17 U.S.C. § 101. Clothes are useful articles, and therefore, are not protected by copyright. However, a useful article may be protected if it “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,” 17 U.S.C. § 101. If a particular feature of a useful article is physically separatable, or “conceptually separable” from its utilitarian aspect, then it is protected by copyright.

While physical separatability is easily understandable (see Copyright Office Compendium 924.2[A]), conceptual separability is not easily defined. Federal courts have each their own “conceptual separatibility” test.

In our case, the Sixth Circuit reversed and created its own five-part conceptual separability test to reach the conclusion that the designs created by Varsity to adorn the uniforms were conceptually separable from its utilitarian function. The Sixth Circuit test asks five questions: (1) is the design is a pictorial, graphic or sculptural work, (2) is the design a useful article, (3) what are the utilitarian aspects of the useful article, (4) can the viewer of the design identify the pictorial, graphic or sculptural features separately from the utilitarian aspects of the useful article, and (5) whether the design features exist independently of the utilitarian aspects of the useful article. The Sixth Circuit concluded that the designs of the uniform are “wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement and wick moisture” and thus the graphic features of Varsity's cheerleading-uniform designs exists independently from this utilitarian aspect.

Judge McKeague dissented. While agreeing with the Sixth Circuit’s general approach of first defining what is the function of the work, then finding out whether the elements claimed as being copyrightable can be identified separately from that function, or can exist independently of it, Judge McKeague disagreed on in what is the function of the cheearleading uniforms. For Judge McKeague, the function of a cheerleading uniform is to identify its wearer as a member of a group, and thus its design is indeed functional.

Star Athletica filed a petition for a writ of certiorari in January 2016, which was granted by the Supreme Court. The Court will now answer this question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?” (This page of the SCOTUS blog lists all the briefs filed in this case, including amicus curiae briefs.)  

Respondent Varsity has filed its brief on September 14. It argues that two-dimensional artwork on useful articles “easily satisfy” the separability test (p.26). For Varsity, the functions of two-dimensional artwork are “purely decorative or communicative, not utilitarian, which makes such artwork inherently separatable from [the utilitarian aspects of a useful article]” (p.26).

The Supreme Court now has the opportunity to unify the conceptual-separability test. It will probably specify the instances when a particular garment can indeed be protected by copyright. We will keep you posted.

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