RESPONDENT: Varsity Brands, Inc., et al.
LOCATION: United States District Court for the Western District of Tennessee, Western Division
DOCKET NO.: 15-866
LOWER COURT: United States Court of Appeals for the Sixth Circuit
CITATION: US ()
GRANTED: May 02, 2016
ARGUED: Oct 31, 2016
Eric J. Feigin - for United States, as amicus curiae
John J. Bursch - for petitioner
William M. Jay - for respondents
Facts of the case
Varsity Brands, Inc. (Varsity) designs and manufactures clothing and accessories for use in various athletic activities, including cheerleading. Design concepts for the clothing incorporate elements such as colors, shapes, lines, etc., and do not consider the functionality of the final clothing. Varsity received copyright registration for the two-dimensional artwork of the designs at issue in this case, which were very similar to ones that Star Athletica, LLC (Star) was advertising. Varsity sued Star and alleged, among other claims, that Star violated the Copyright Act. Star asserted counterclaims, including one that alleged that Varsity had made fraudulent representations to the Copyright Office because the designs at issue were not copyrightable. Both parties filed motions for summary judgment. Star argued that Varsity did not have valid copyrights because the designs were for “useful articles,” which cannot be copyrighted, and the designs cannot be separated from the uniforms themselves, which also makes the designs impossible to copyright. Varsity argued that the designs were separable and non-functional, and therefore that the copyrights were valid and had been infringed. The district court granted summary judgment for Star and held that the designs were integral to the functionality of the uniform. The U.S. Court of Appeals for the Sixth Circuit reversed and held that the Copyright Act allows graphic features of a design to be copyrighted even when those designs are not separable from a “useful article.”
What is the appropriate test to determine whether a feature of a “useful article” is copyrightable under the Copyright Act?
Media for Star Athletica, LLC v. Varsity Brands, Inc.
Audio Transcription for Oral Argument - October 31, 2016 in Star Athletica, LLC v. Varsity Brands, Inc.
John G. Roberts, Jr.:
We'll hear argument next in Case 15-866, Star Athletica v. Varsity Brands. Mr. Bursch.
John J. Bursch:
Thank you, Mr. Chief Justice, and may it please the Court: Congress did not intend to grant a century-long copyright monopoly in cheerleader uniform design.
And there are three points that support that conclusion. First, by subjecting two-dimensional pictures and graphics as well as sculptures to Section 101 separability test, Congress made clear that two-dimensional and three-dimensional designs must be analyzed for separability. Second, under Section 101's text, the dispositive questions are twofold: Whether the deign features can be identified separately from the useful article's utilitarian aspects; and second, whether they can exist independently, that is, the design features do not add to or change the useful article's utilitarian --
Ruth Bader Ginsburg:
Why, in this case, would we even need to get to any question of separability? What was submitted was a two-dimensional artwork.
It may not be like Mondrian, but it is chevrons and other things. They are not submitting the cheerleader's uniform itself.
They are not saying anything about the shape of the uniform, the cut of the uniform.
They are just saying these zigzag designs -- and you can choose from five different ones that are interchangeable, the design. So why isn't this a -- a case of not -- not part -- the pictorial graphic element is not part of the design of the cheerleader's uniform; it's superimposed on it.
It's reproduced on it.
It's applied to it.
John J. Bursch:
There two reasons, Justice Ginsburg.
First, consider the example where you have a designer who designs a military uniform.
And on that military uniform, they design the best desert camouflage that's been ever designed in the history of the world. And they submit it to the copyright office, and they don't claim the design in the uniform, they only claim copyright in the design on the uniform. There is no question they would have the copyright in the design, but the courts would still look to see whether that adds to the utilitarian aspects of that uniform such that that design copyright holder could not prevent the military from producing a military uniform that uses that design. That's why it's so important to understand that in Section 101, not only two-dimensional -- or three-dimensional, but also two-dimensional designs are subject to separability. And there's a second reason, Justice Ginsburg.
What you're referring to, generally, is kind of the area of fabric design.
And a good example of fabric design is the -- the flowers on the fabric in the Folio Impressions case that we reprint on page 7 of our reply brief. And those flowers, you could expand the design, you could contract the design, you can make any article of clothing out of it whatsoever, you could rotate it 45 degrees, and it always works functionally the same. Here, when you're talking about these cheerleader uniform designs, the arrangement of the color blocks and the chevrons and the stripes, if you made it smaller and put it in the center of a uniform, it would no longer have the slimming effects.
It wouldn't make the wearer look taller.
I mean, if you put it on a hat or a lunch box, it wouldn't have those functions.
But they have put it on those other items.
That's their whole point, that they've taken the pictorial design and applied it not just to a -- by the way, this is not conceding, I think, by them.
They'll talk on their own and tell me -- that this isn't obvious and -- and some of your amici brief seemed to take that position, that if all we're looking at is a picture of this color blocks and stripes, that it may be too obvious to qualify for copyright protection, or not original enough, whatever. But my point is that they already have done that.
They've taken the designs and not put it on a cheerleading uniform.
They've put it on sweats. They've put it on both tops and bottoms. So what does that do for you?
John J. Bursch:
Let me respond to both of those points, that the obvious in the second; first, the other garments. To the extent they're putting it on other garments, if you look closely at those pictures, the design changes.
It's not the same design anymore.
And to the extent that it remains similar, it's because, for example, the warmup jackets are putting those lines in the same place. So the great example of this is on page 21 of the Fromer and Buccafusco brief, where it is the Stella McCartney dresses on Kate Winslet.
And she's got those slimming, dark lines along the sides that change how she is perceived.
It makes her shape look different to someone who is looking at her, and the lines on these uniforms do the exact same thing. Similarly, you've got in -- in these uniforms you've got the waist-narrowing Vs on the sides. It creates the optical illusion that the wearer is thinner than they actually are, slimmer.
You've got the Müller-Lyer lines --
How could you copyright anything under your use of "utility," under your definition of "utility"?
John J. Bursch:
Because my definition --
Every form -- I suspect in most cases, every form gives something else, an attractiveness, to the purchaser.