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Tag Archives: PGS works

United States Supreme Court to hear copyright lawsuit regarding cheerleader uniforms

This entry is a follow up to a previous blog article[1] regarding the case of Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015), in which the Sixth Circuit Court of Appeals ruled that designs on cheerleading uniforms are eligible for copyright protection, namely stripes, chevrons, and color blocks incorporated into a uniform. Star Athletica, LLC then filed a petition for a writ of certiorari to the Supreme Court, which recently agreed to hear the case.[2] The Supreme Court agreed to hear only one issue from Star Athletica, LLC’s petition, namely the question: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?[3]

Copyright protection can exist for “pictorial, graphic, and sculptural works” (“PGS works”).[4] PGS works “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.”[5] Generally, copyright protection will not inure to something that merely serves a utilitarian purpose, such as a chair. This dispute resolves around how to separate copyrightable designs from utilitarian objects that are not subject to copyright protection, within a cheerleading uniform. Star Athletica, LLC claims in its petition that this case will resolve important issues in the fashion industry and warns that if the Sixth Circuit’s decision is not overturned then “industrial designers can claim copyright protections . . . for pleats on tennis skirts, button patterns on golf shirts, and colored patches on rugby uniforms.”[6]

The Supreme Court’s decision is also likely to be significant in that it has the potential to provide a clear test for determining the extent of copyright protection in PGS Works. As stated in more detail in our previous blog entry, the case law is unsettled regarding the proper test to determine whether creative designs are separate from utilitarian functions. The Supreme Court’s decision can also have significant impact on the 3D printing industry. A clear test would provide clarity on the extent to which certain 3D printed objects that combine creative designs and utilitarian functions are subject to copyright protection.[7] An Amicus Brief filed by 3D printing companies warns that “[t]he current state of the law increases barriers to entry for market participants who stand to take greatest advantages of 3D printing. . . . [and that] [t]he confusion surrounding the conceptual separability doctrine will likely lead to elevated levels of litigation.”[8] Although a decision by the Supreme Court is not likely for several months, when it is entered, it is likely to have significant impact on the scope of copyright protection, especially in the fashion industry.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] This blog was entitled “Sixth Circuit finds that designs on Cheerleader Uniforms can by copyrighted.”
[2] See, Star Athletica, LLC v. Varsity Brands, Inc., 2016 WL 98761 (May 2, 2016).
[3] Id.
[4] See, 17 U.S.C. § 102(a)(5)
[5] See, 17 U.S.C. § 101.
[6] See, http://www.scotusblog.com/wp-content/uploads/2016/05/SACP.pdf, at pg. 6.
[7] See, http://www.scotusblog.com/wp-content/uploads/2016/03/Star-Athletica-v-Varsity-Brands-Amicus-of-Shapeways-FILED.pdf, at pg. 2-5.
[8] Id. at pg. 4.

Sixth Circuit finds that designs on Cheerleader Uniforms can be copyrighted

The United States Court of Appeals for the Sixth Circuit recently ruled that designs on cheerleading uniforms are eligible for copyright protection.[1] Varsity Brands, Inc. involved a dispute between two cheerleading apparel and accessory companies regarding whether graphic designs that appear on cheerleading uniforms and warm-ups are subject to copyright protection.[2] The Plaintiff alleged that the Defendant sold cheerleading uniforms that were substantially similar to the cheerleading uniforms sold by the Plaintiff and sued for copyright infringement, among other claims.[3] The Defendant argued that the copyright registrations relied upon by Plaintiff were invalid because the subject designs could not be physically or conceptually separable from the functionality of the uniforms.[4]

Copyright protection can exist for “pictorial, graphic, and sculptural works” (“PGS works”).[5] PGS works “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.”[6] Generally, copyright protection will not inure to something that merely serves a functional purpose.

The Varsity Brands, Inc. court primarily focused on what is known as a separability analysis.[7] The Sixth Circuit identified that the graphic features of the designs subject to the Plaintiff’s copyright registrations are “stripes, chevrons, zigzags, and color-blocking.”[8] Thus, the Sixth Circuit had to determine whether the subject designs are physically and conceptually separable from the functional aspects of the uniforms to which the designs are affixed. For example, an ornament on the hood of a car may be subject to copyright protection because you can take the ornament off of the car and the car would still be able to operate, thus, the ornament is a design that can be physically separable from the functional aspects of the car.

The separability analysis is largely unsettled in the case law as several courts have taken different approaches and proposed different tests to be applied.[9] The Sixth Circuit attempted to formulate its own test by applying a five (5) question test, which focuses on determining the work’s function and whether the claimed copyrightable elements can be separable or exist independently of that function.[10] In applying this test to the Plaintiff’s designs the Sixth Circuit found that such designs could be subject to copyright protection.[11] The Sixth Circuit noted that the functional aspects of a cheerleading uniform are to “cover the body, wick away moisture, and withstand the rigors of athletic movements,” such as by allowing the wearer to “cheer, jump, kick, and flip.”[12] The Sixth Circuit rejected the Defendant’s argument that the graphic features embodied in Plaintiff’s registrations were not separable from the functional aspects of the cheerleading uniform because they serve a decorative function, noting that “[s]uch a holding would render nearly all artwork unprotectable.”[13] The Sixth Circuit also reversed the District Court’s finding that the arrangement of stripes, chevron, zigzags and color-blocking were not separable from the cheerleading uniform, noting that all of the Plaintiff’s designs are interchangeable and do not enhance the uniform’s function to cover the wearer’s body.[14]

The determination of whether a PGS work can be subject to copyright registration can be a complicated task. The Sixth Circuit’s approach seems reasonable but it will be interesting to see whether other Circuits adopt the approach and whether holes in the approach will be developed by future case law. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Varsity Brands, Inc. v. Star Athletica, LLC, No. 14-5237, 2015 WL 4934282 (6th Cir. Aug. 19, 2015).
[2] Id. at 2015 WL 4934282 *1.
[3] Id. at 2015 WL 4934282 *2.
[4] Id.
[5] See, 17 U.S.C. § 102(a)(5)
[6] See,  17 U.S.C. § 101.
[7]  Varsity Brands, Inc., 2015 WL 4934282*8-14.
[8] Id. at 2015 WL 4934282 *17.
[9] Id. at 2015 WL 4934282 *8-14.
[10] Id. at 2015 WL 4934282 *14-16.
[11] Id. at 2015 WL 4934282 *18-19.
[12] Id. at 2015 WL 4934282 *16.
[13] Id. at 2015 WL 4934282 at *17.
[14] Id.