Supreme Court Grants Cheerleading Apparel Manufacturer’s Request: Uniform’s Decorative Elements are Copyrightable

The U.S. Supreme Court held that a cheerleading uniform’s decorative elements may be protected under copyright law — a ruling aimed at providing some resolution regarding the disagreement over when these types of designs are eligible for protection under U.S. copyright law.

As background, in 2010, Varsity Brands, Inc., the country’s largest cheerleading supplier, accused one of its rivals, Star Athletica, of copying the key elements of its uniform’s design, including stripes, chevrons, and other graphic elements that Varsity had registered with the Copyright Office. In response, Star swung back, arguing that the designs were too useful to be afforded copyright protections.

In 2014, a federal judge ruled in favor of Star, holding that the design and function of the uniform were integrally intertwined, and thus, could not be separated enough to be protected. However, the Sixth Circuit reversed that decision, holding that “[b]ecause we conclude that the graphic features of Varsity’s design can be identified separately from, and are capable of existing independently of, the utilitarian aspects of cheerleading uniforms, we hold that Varsity’s graphic designs are copyrightable subject matter.”

However, the Sixth Circuit’s ruling came with a dissenting opinion, which urged the Supreme Court to intervene, as the case law on “separability” has been a mess for a long time.

Star appealed to the high court in 2016, which was accepted by the justices in May. The issue presented on appeal was how courts should determine whether such “separability” exists — an issue that is split amongst the lower courts.

In a 6-2 decision, the Supreme Court held that Varsity could copyright certain elements of its uniform, even though Copyright law typically does not apply to apparel. The court reasoned that the Sixth Circuit already ruled that the decorative elements of Varsity’s uniforms were “conceptually separable” enough from the underlying garment, and thus, could be protected.

In reaching its decision, Justice Clarence Thomas, writing for the majority, articulated a two-part test for when such elements or expressions of apparel may be protected. It must “be perceived as a two- or three-dimensional work of art separate from the useful article,” and the expression will still be protected when “imagined separately from the useful article into which it is incorporated.” Thus, Justice Thomas held that “[b]ecause the designs on the surface of [Varsity’s] cheerleading uniforms in this case satisfy these requirements, the judgment of the court of appeals is affirmed.”

However, Justice Thomas’ holding did not come without limitations, as he stated, “[t]o be clear, the only features of the cheerleading uniform eligible for a copy right in this case is the two-dimensional work of art. . . [University] ha[s] no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear.”

Further, Justice Thomas acknowledged the “widespread disagreement” regarding the case law in this area, as there have been about a dozen different tests created by courts dealing with this issue, and that the High Court took this case to resolve that mess. As Justice Thomas stated in his decision, “Congress has provided copyright protection for original works of art, but not for industrial designs. . . The line between art and industrial design, however, is often difficult to draw. This is particularly true when an industrial design incorporates artistic elements.”

This case was closely watched by apparel producers, who have long urged for greater protections in this area. For example, a prominent industry group, The Council of Fashion Designers of America, moved for the justices to rule in favor of University — arguing that a ruling for Star “would have a swift and delirious effect,” as it would leave apparel producers and designers “defenseless against copyists.” On the opposite end of the spectrum, consumer groups argued for stricter limits on separability, as useful items should remain protected by patent law, because it imposes tougher limits on duration and eligibility.

It is the view of the consumer group in which Justice Stephen Breyer and Justice Anthony Kennedy presumably wrote the dissenting opinion in this case. The dissenters reiterated, and stressed, the limits laid out by the majority opinion before concluding that under the majority’s test, University’s uniform’s elements should not have been afforded protection. Justice Breyer wrote that a “decision by this court to grant protection to the design of a garment would grant the designer protection that Congress refused to provide,” which risks “increased prices and unforeseeable disruption in the clothing industry, which in the United States alone encompasses nearly $370 billion in annual spending and 1.8 million jobs.”

However, the litigation between University and Start will not end here, as the case must return to the trial court in order to determine a separate issue from the one presented to the Supreme Court — whether Varsity’s designs are original enough to be afforded protection under copyright law.

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