Copyright Law 2017 Updates – Decorative Elements of Cheerleading Uniforms can be subject to copyright protection!  Give me a V-I-C-T-O-R-Y!

Introduction

A recent big win for Varsity Brands, Inc. (“Varsity”) one of the country's largest suppliers of cheerleading uniforms.   By a 6-2 vote of the US Supreme Court Justices Varsity's competitor – Star Athletica – a supplier of cheerleading apparel that contained similar zig-zag design elements, was liable for federal copyright infringement.  Here is a link to the cheerleading uniform copyright case.  You can see the various designs at issue by clicking on this link.

Case facts

According to the case:

Respondents Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc., design, make, and sell cheerleading uniforms. Respondents have obtained or acquired more than 200 U. S. copyright registrations for two-dimensional designs appearing on the surface of their uniforms and other garments.

These designs are primarily “combinations, positionings, and arrangements of elements” that include “chevrons lines, curves, stripes, angles, diagonals, inverted [chevrons], coloring, and shapes.” App. 237.

At issue in this case are Designs 299A, 299B, 074, 078, and 0815. See Appendix, infra. Petitioner Star Athletica, L. L. C., also markets and sells cheerleading uniforms. Respondents sued petitioner for infringing their copyrights in the five designs.

The case started at the district court level and eventually made it's way up to the high court of the United States.

Holding of the Court

 A.  The Court first discussed copyright infringement in general:

“The first element of a copyright-infringement claim is “ownership of a valid copyright.” Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 361 (1991). A valid copyright extends only to copyrightable subject matter. See 4 M. Nimmer & D. Nimmer, Copyright §13.01[A] (2010) (Nimmer). The Copyright Act of 1976 defines copyrightable subject matter as “original works of authorship fixed in any tangible medium of expression.” 17 U. S. C. §102(a). “Works of authorship” include “pictorial, graphic, and sculptural works,” §102(a)(5), which the statute defines to include “two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans,” §101. And a work of authorship is “‘fixed' in a tangible medium of expression when it[ is] embodi[ed] in a” “material objec[t] from which the work can be perceived, reproduced, or otherwise communicated.” Ibid. (definitions of “fixed” and “copies”).”

B.  Legal issue

We must now decide when a feature incorporated into a useful article “can be identified separately from” and is “capable of existing independently of ” “the utilitarian aspects” of the article.

C.   Final determination

The Court held:

“In sum, a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium. Applying this test to the surface decorations on the cheerleading uniforms is straightforward. First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter's canvas—they would qualify as “two-dimensional . . . works of . . . art,” §101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression—different types of clothing—without replicating the uniform. See App. 273– 279. The decorations are therefore separable from the uniforms and eligible for copyright protection.”

Put another way:

“We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature:

(1) can be perceived as a two- or three-dimensional work of art separate from the useful article

and

(2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article. Because the designs on the surface of respondents' cheerleading uniforms in this case satisfy these requirements, the judgment of the Court of Appeals is affirmed.”

D.  Dissent

One judge made a dissenting argument noting:

“The dissent suggests that our test would lead to the copyrighting of shovels. Post, at 7; Appendix to opinion of BREYER, J., fig. 4, post. But a shovel, like a cheerleading uniform, even if displayed in an art gallery, is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” 17 U. S. C. §101. It therefore cannot be copyrighted. A drawing of a shovel could, of course, be copyrighted. And, if the shovel included any artistic features that could be perceived as art apart from the shovel, and which would qualify as protectable pictorial, graphic, or sculptural works on their own or in another medium, they too could be copyrighted. But a shovel as a shovel cannot.”

Justice Breyer (dissenting) noted:

“Were I to accept the majority's invitation to “imaginatively remov[e]” the chevrons and stripes as they are arranged on the neckline, waistline, sleeves, and skirt of each uniform, and apply them on a “painter's canvas,” ante, at 10, that painting would be of a cheerleader's dress. The esthetic elements on which Varsity seeks protection exist only as part of the uniform design—there is nothing to separate out but for dress-shaped lines that replicate the cut and style of the uniforms. Hence, each design is not physically separate, nor is it conceptually separate, from the useful article it depicts, namely, a cheerleader's dress. They cannot be copyrighted.”

Contact a federal copyright protection attorney

If you are in the sports, fashion, or apparel business, this is a big case.  If you are seeking to protect your design elements, or are engaged in a dispute with a competitor over copyright or trademark issues, contact us to discuss your case.  We can help with cease and desist letters, subpoenas, DMCA take down notices, intellectual arbitration and mediation and federal court litigation.  Call us at (877) 276-5084 to discuss.  We offer free initial consultations.