The decision in this case will clarify the conceptual separability test and could offer broader protection for useful articles.
The US Supreme Court granted certiorari on May 2 in Star Athletica, L.L.C. v. Varsity Brands, Inc.[1] The Court will consider the appropriate test for copyright protection of clothing and other useful articles. Section 101 of the Copyright Act of 1976 (Copyright Act) only allows copyright protection for design features of useful articles’ pictorial, graphic, or sculptural features and only if such features can be identified separately from, and are capable of existing independently of, the utilitarian aspects of an article.[2] If the utilitarian aspects of the article are not physically separable from the design aspects, the article is only eligible for copyright protection if the utilitarian and design elements are “conceptually separable.” Since the codification of this “conceptual separability” standard in the Copyright Act, US courts have struggled to determine how to define when design features exist independently from functional considerations and become subject to copyright protection. Circuit courts, the US Copyright Office, and academics have proposed at least nine different tests to analyze conceptual separability.[3]
Background
Varsity Brands sued Star Athletica in the US District Court for the Western District of Tennessee, claiming infringement of its copyright in certain of its cheerleading uniforms. Star Athletica responded that the uniforms were useful articles and therefore not copyrightable. The district court granted summary judgment for Star Athletica, holding that the designs at issue were functional because they identified the wearer as a cheerleader, reflecting the “core of the ideal—of ‘cheerleading-uniform-ness,’” and therefore were useful articles not entitled to protection.[4] The US Court of Appeals for the Sixth Circuit reversed, holding that the graphic features of Varsity’s designs were conceptually separatable from the utilitarian aspects of the cheerleading uniform.[5] In reaching this holding, the Sixth Circuit announced its own test for conceptual separability, which it summarized as follows: if the artistic feature and the useful article could exist side by side and be perceived as fully realized, separate works, the design is conceptually separate from the utilitarian aspects of the article. Star Athletica appealed, and the Supreme Court agreed to hear the conceptual separability question.
Above: Examples of Varsity Brands’ cheerleader uniform designs.
Different Tests for Conceptual Separability
Courts have long struggled to define “conceptual separability,” which the US Court of Appeals for the Fourth Circuit has described as a “metaphysical quandary.”[6] In contrast to the Sixth Circuit test articulated in the Star Athletica decision, the US Court of Appeals for the Seventh Circuit frames the question as whether the design elements reflect the designer's artistic judgment exercised independently of functional influences or the design reflects utilitarian pressures as well as aesthetic choices.[7] The US Court of Appeals for the Second Circuit adopted a process-based approach and explained that if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects are not conceptually separable from the utilitarian elements.[8] The US Court of Appeals for the Fifth Circuit focuses on whether an article would still be marketable even if it had no utilitarian use.[9] These various formulations reflect the underlying difficulty in evaluating whether and to what extent utilitarian concerns shape a particular design. Different approaches have created uncertainty in determining the scope of copyright protection for useful articles.
Separability, Fashion, and Design
Should the Court provide a single test for conceptual separability, the decision would affect the ability to use copyright law as a tool in a range of industries. One notable application would be the fashion industry. Clothing design falls within an area that is difficult to classify within the overlapping spheres of design patent, trademark, and copyright law. Copyright protection has been difficult to obtain for clothing designs since the Fifth Circuit’s holding in Galiano v. Harrah's Operating Co., in which the court denied copyright protection to uniforms designed by Galiano, using a likelihood of marketability standard to evaluate conceptual separability.[10] Similarly, the Second Circuit’s holding in Jovani Fashion, Ltd. v. Fiesta Fashions emphasized that decorative functions, such as sequins, ruched satin, and tulle layers, serve decorative as well as functional features that are not separable.[11]
Although the US Congress has introduced bills to provide limited copyright protection for designers of innovative clothing and accessories that would provide relief against others using “substantially identical” designs,[12] these legislative efforts have thus far been unsuccessful. If the Supreme Court adopts a lenient test for conceptual separability, like that of the Sixth Circuit, this could create an opportunity for greater enforcement of copyright interests in the fashion industry, among others. In addition to clothing, conceptual separability has been disputed in the contexts of furniture design, measuring spoons, and mannequins, to name only a few.[13]
Conclusion
As the US Court of Appeals for the Third Circuit noted, “Courts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article's utilitarian function.”[14] The Supreme Court will wrestle with that metaphysical quandary in a case that may significantly shape the scope of copyright protection in the United States.
[1] Star Athletica, L.L.C. v. Varsity Brands, Inc., 84 USLW 3407, US, May 2, 2016 (No. 15-866).
[2] 17 U.S.C. § 101 (1976).
[3] Star Athletica, L.L.C. v. Varsity Brands, Inc., 84 USLW 3407, US, May 2, 2016 (No. 15-866).
[4] Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508, 2014 WL 819422, at *1 (W.D. Tenn. Mar. 1, 2014), vacated and remanded, 799 F.3d 468 (6th Cir. 2015).
[5] Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).
[6] Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 434 (4th Cir. 2010).
[7] Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 372 F.3d 913, 931 (7th Cir. 2004).
[8] Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).
[9] Galiano v. Harrah's Operating Co., 416 F.3d 411, 419 (5th Cir. 2005).
[10] 416 F.3d 411, 422 (5th Cir. 2005).
[11] Jovani Fashion, Ltd. v. Fiesta Fashions, 500 Fed. Appx. 42 (2d Cir. 2012).
[12] See, e.g., H.R. 2033, H.R. 2196, S. 1957, and S. 3523.
[13] See, e.g., Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 434 (4th Cir. 2010); Bonazoli v. R.S.V.P. Int'l, Inc., 353 F.Supp.2d 218, 224 (D.R.I.2005); Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 372 F.3d 913, 931 (7th Cir. 2004).
[14] Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670 (3d Cir. 1990).
