The expression Òthe clothes make the (wo)manÓ may be taken as a commentary that human beings are first and foremost visual creatures, and how we perceive each other is, for better or worse, at least initially affected the most by the way we present ourselves in appearance to others. A corollary to the above would be that our appearance speaks for us, hence the concept of fashion.
In todayÕs world, fashion has become a cornerstone industry in our daily lives, and given that the raison dÕtre of (most) fashion products is to display them in public, how could fashion designers thrive economically when it is inherently difficult to prevent others from copying attractive design features found on popular products? There is thus no surprise that the fashion industry has been a strong proponent of greater intellectual property protection to designs, and a main battlefront between the fashion industry and knock off manufacturers has been over which parts of a design is considered protectable and which are not.
One such case came before the US Supreme Court this October Term. Varsity Brands, Inc. is a global leader in the manufacturing and distribution of cheerleading uniforms and accessories. Its design process, according to the facts on the record, consists of designers sketching Òcombinations, positionings, and arrangements of elements which include VÕs (chevrons), lines, curves, stripes, angles, etc.,Ó which further undergo a selection process before production. Varsity then applied and obtained copyright registration for a number of those designs as a Òtwo-dimensional artworkÓ. The defendant-petitioner Star Athletica, LLC is a relative newcomer to the industry and is engaged in the sales of uniforms and accessories for various sports, including cheerleading. Varsity, in filing suit in the United States District Court for the Western District of Tennessee, alleged that some of StarÕs cheerleading uniforms contain design elements that are substantially similar to those registered by Varsity per above in violation of the Copyright Act. Star, in its response, counterclaimed that VarsityÕs above registered designs were insufficient for copyright protection, as (1) they are for useful articles, and (2) the design elements are physically or conceptually not separable from the uniforms. The District Court granted summary judgment for Star. Varsity appealed, and the United States Court of Appeals for the Sixth Circuit reversed and held that VarsityÕs designs are entitled to copyright protection.
Sections 101 and 102 of the Copyright Act of 1976 spells out what may be entitled to copyright protection: First, ÒPictorial, graphic, and sculptural worksÓ are entitled to copyright protection. ÒÔ[P]ictorial, graphic, and sculptural worksÕ include two-dimensional and three-dimensional works of fine, graphic, and applied artsÉprints and art reproductionsÉÓ Ò[T]he design of a useful articleÉshall be considered a pictorial, graphic, or sculptural work.Ó ÒA Ôuseful articleÕ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.Ó Finally, and the central part of this dispute, Ò[the design of a useful article is 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.Ó
The terms ÒphysicalÓ and ÒconceptualÓ separability are therefore not in the statute itself; it is found in the legislative history for the above provisions as a way to provide better guidance to distinguish between copyrightable applied art and uncopyrightable works of industrial design. However, there is little substantive explanation as to how such determination may be made in practice. The legislative history makes a reference to Mazer v. Stein, 347 U.S. 201 (1954) as an example of how courts have already recognized in common law that an artistic work incorporated into a useful article is protectable if such work may exist independently as a work of art (in the Mazer case, a dancing figurine serving as a lamp base). According to the Sixth Circuit, physical separability is relatively easy to understand for three-dimensional objects, as it would not be difficult to remove the lamp from the Mazer lamp base and evaluate whether such figurine lamp base stands as a copyrightable piece of art on its own, but this approach would rarely be feasible for two-dimensional works, where the artistic features are generally impossible to separate from the useful article, hence the need for the conceptual separability doctrine.
The difficulty of actually coming up with a viable mechanism for determining separability is highlighted by the Sixth CircuitÕs summary of the currently recognized nine different tests used by the Copyright Office and the courts, followed by recent examples where the courts found it necessary to apply multiple tests at the same time to make a decision. The Sixth Circuit concluded that it would have to adopt the same approach for this case and fashioned yet another test for determining copyrightability and separability.
The Sixth CircuitÕs test asks five questions, the first three regarding the copyrightability and the last two about separability:
1. Is the design a Òpictorial, graphic, or sculptural work?Ó
2. Is the design a Òdesign of a useful article?Ó
3. What are the utilitarian aspects of the useful article?Ó
4. Can the viewer identify the Òpictorial, graphic or sculptural features separately from the utilitarian aspects of the useful article?Ó
5. Can the Òpictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?Ó
Based on this formulation, the Sixth Circuit disposed of the first three questions quickly in the affirmative, as VarsityÕs designs were registered by the Copyright Office as a Ò2-Dimensional artworkÓ, and such designs are for cheerleading uniforms, which do have Òintrinsic utilitarian functionsÓ, such as covering the body, wick moisture and allow for free movement per VarsityÕs argument which was taken up by the Sixth Circuit. It turned out that this definition allowed the court to conclude in the fourth and fifth questions that i) the utilitarian functions would still be present in a plain white uniform without VarsityÕs designs, and ii) the fact that VarsityÕs designers start out with those stripes, lines, chevrons, curves, etc. and how its customers make their selections based on the design are evidence that they are clearly separable from the Òutilitarian functionsÓ of the cheerleading uniform. With affirmative answers to all five inquiries, the Sixth Circuit readily held that VarsityÕs designs are copyrightable subject matter.
In its petition to the Supreme Court, Star primarily objected to the Sixth CircuitÕs decision to create yet another separability test on top of the nine existing tests. Star further argued that given how the Sixth Circuit is recognizing the stripes, lines and other colors and shapes on a cheerleader uniform as separable decorative elements worthy of copyright protection even though they are generally thought of as the sine qua non of cheerleader uniforms, it would create a potential loophole for designers to bypass the generally-recognized principle that garment design is not copyrightable by claiming such designs as separable decorative features. Under such a framework, the Sixth Circuit would have concluded differently from similar cases in other courts, such as Galiano v. HarrahÕs Operating Co., 416 F.3d 411 (5th Cir. 2005), which held that copyright of sketches of casino uniforms does not prevent another from manufacturing the depicted uniforms because the uniformÕs buttons, pleats and collars are not separable from their utilitarian function as a casino uniform. Varsity responded by arguing that the Galiano court was actually only talking about garment designs being unprotectable, while Òfabric designÓ, which are Òdesigns include patterns or artistic features imprinted onto a fabric or that appear repeatedly through the fabric,Ó has generally been protectable under copyright, and that is what VarsityÕs designs are.
The briefs between the parties in the lead-up to oral arguments showed that the primary point of disagreement between the parties was to what extent could designs on clothing be considered utilitarian so as to put them outside the reach of copyright protection, thus the Justices focused their questions on this issue during oral argument. In response to StarÕs argument that a copyright in a two-dimensional artwork of an object should not prevent others from manufacturing the depicted object, the Justices cited the example of a tuxedo shirt and asked how the current case is any different if it is agreed that no one else can make a tuxedo shirt. Star tried to distinguish the example by asserting that the tuxedo shirt design adds nothing to the shirt itself, while the lines and curves on a cheerleader uniform serve to slim the features of the wearer and thus also serve a utilitarian function. However, even after discussing examples ranging from camouflage on military uniforms (clearly a functional aspect) to designs on lunchboxes (decorative only), StarÕs position still hinge on a judgment call as to whether the design is what Òmakes [the garment] what it isÓ, and there may be times where, as Star admitted in part in its statement, it would be a even closer call than in this case.
For Varsity, the JusticesÕ approach appeared to be two-fold: Does Varsity agree with the idea that a design may not be copyrighted if it Òmake the article what it is,Ó and if not, would not granting copyright protection to VarsityÕs design open the gates to protection on designs on general clothing, which would be particularly impactful to competition due to the extended length of protection offered to copyright versus other forms of intellectual property. To the first line of questioning, Varsity took care to avoid agreeing with the idea and argued instead that StarÕs concept of utilitarian function (i.e. VarsityÕs designs being intrinsic in identifying the wearer as a cheerleader) is not supported by the Copyright Act; to Varsity, the utilitarian functions at issue are essentially what the Sixth Circuit has stated: covering the wearerÕs body and allowing freedom of movement, so its designs play no part in providing such functions. As for the competition issue, Varsity attempted to clarify to the Justices that Varsity is only claiming copyright over the artwork appearing on the surface of the cheerleader uniform; because such artwork qualify as fabric design, and those have been copyrightable without issue, ruling in favor of Varsity would not create any anticompetitive impact.
If the Justices were persuaded to grant this petition in light of the dissenting judgeÕs comment in the Sixth Circuit decision that ÒÉthe Supreme Court must clarify copyright law with respect to garment design. The law in this area is a messÑand it has been for a long timeÉÓ it is unclear whether the partiesÕ briefs and oral arguments have been helpful. StarÕs legal strategy to impress upon the Justices that there is something inherent in VarsityÕs design, namely how the lines and stripes create a Òslimming effectÓ, that makes it inseparable from cheerleader uniforms, regardless of its actual merits in the dispute, does not appear to be particularly useful for the Supreme Court to formulate clearer rules around, as it would require a judge to make an evaluation on the aesthetics of an artistic design Ð something that the courts often immediately declare their lack of expertise in — then compare it to the supposed utilitarian function of the object at issue, which the parties apparaently cannot even agree on in this case. On the other hand, the Justices appeared to be quite concerned about the potential anticompetitive effects from a ruling for Varsity. VarsityÕs registered artwork is a picture of a cheerleader dress with the designs at issue, Varsity admitted at the end of its statement that small deviations would not avoid infringement. This plays directly into Justice BreyerÕs hypothetical that anybody could take a picture of a dress, register it with the Copyright Office, and turn around and sue companies who use the same or similar designs on their clothing. Even if one considers, as Varsity contends, that it is only claiming the surface design (i.e. fabric design) on the dress and not the cut of the dress, it is still missing the issue because VarsityÕs blanket statement that fabric design is copyrightable will run into trouble in cases such as camouflage on uniforms, where the Copyright Act requires the court to engage in separability analysis. So at the end of the day the Supreme Court still has to come back to consider what to do with the conceptual separability doctrine before coming to a decision in this case, and neither party appeared to have offered concrete ideas during oral argument that would help the Supreme Court to make a breakthrough.