“Classical philosophy does not often come to play in the
field of mundane legal analysis.” But here the court was called on to identify
the essence of a “cheerleading uniform,” for purposes of conceptual
separability. Here, the court thoughtfully, and I hope with some enjoyment, considered
the idea of garments without any of the designs and colors ordinarily printed
on (or otherwise applied to) them that generally identify an “unavoidably imperfect
reflection of the ideal” of a “cheerleading uniform.” Because the absence of such designs and colors
means that the garment doesn’t signal the presence of a cheerleading uniform,
it follows that the presence of such designs and colors is at the core of
cheerleading uniform-ness. Thus, the
colors and designs could not be conceptually separated from the utilitarian
object themselves: the color and design components were therefore not
copyrightable.
Star Athletica published a catalogue of cheerleading uniforms. Varsity Brands sued for copyright
infringement (and trademark infringement, which the court grants summary
judgment on without discussion since Varsity apparently stopped fighting; other
state law tort claims get dismissed because the court declines to exercise its
jurisdiction).
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| One of plaintiff's designs |
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| Allegedly infringing design |
Varsity uses two methods to incorporate a design into a
uniform: cutting and sewing (more common) and sublimation, which involves
printing the design onto a piece of paper, which is then heated and the ink
infused into fabric by pressing paper and fabric together. Varsity uses
designers to create new uniforms, sketching them over a model of a cheerleader;
the designers are not instructed to adapt their designs to the realities of
production.
Varsity registered five uniform designs, using a sketch as
deposit for three of them and the nature of the work/authorship listed as
“2-dimensional artwork.” For the remaining two, Varsity submitted a photograph
of a completed uniform incorporating the design as deposit material, the nature
of the work is listed as “fabric design (artwork)” and the nature of authorship
is listed as “2-dimensional artwork.” Varsity argued that it was entitled to a
presumption of validity because it registered within five years of first
publication of three of the works at issue, but this presumption is “fairly
easy to rebut because the Copyright Office tends toward cursory issuance of
registrations.” Because of the record evidence that the works at issue were
non-copyrightable utilitarian articles, the presumption was “easily dispensed
with.” The shape, style, cut, and dimensions for converting fabric into a
finished garment are not copyrightable, but a pattern to be imprinted on a
fabric, such as a flower, may be copyrightable if it’s conceptually
separable. Conceptual separability is a
bear of an issue (RT: though maybe more
important to actually litigated cases than we think).
The court canvassed the variety of judicial approaches to
separability, though none from the Sixth Circuit. The Seventh Circuit finds separability when “the
artistic aspects of an article can be conceptualized as existing independently
of their utilitarian function.” In Pivot
Point, that court found separability in a mannequin head when the designer
was simply told to create a model reflecting the “hungry-look” of high fashion,
and was free to implement that concept as he wished without regard to
specifications for how far the mannequin’s eyes needed to be apart, or how high
the eyebrows should be. Because the mannequin’s creative aspects “were meant to
be seen and admired,” its sculptural features existed independently from its
utilitarian features. Dissenting, Judge
Kanne criticized the test because all functional items have aesthetic
qualities, but Congress chose to give them less protection.
The Fifth Circuit declined to apply the aesthetic influence
test to garment design in Galiano, a
case about casino uniforms. Instead, for
garment design only, the Fifth Circuit adopted the marketability test, as
proposed by Nimmer: “[C]onceptual severability exists where there is any
substantial likelihood that even if the article had no utilitarian use it would
still be marketable to some significant segment of the community simply because
of its aesthetic qualities.” This,
Nimmer says, harmonizes various holdings, but does have weaknesses (including restrictively
favoring more conventional forms of art).
The Fifth Circuit reasoned that “all lawmaking with respect to PGS works
is interstititial, and most of it [is] freewheeling,” and that the theoretical
unfairness to some art forms was outweighed by the interest in having a clear
rule, at least for garments if not for all applied art.
The Fourth Circuit found conceptual separability in two
furniture collections with decorative carving.
The designs were “superfluous nonfunctional adornments for which the
shape of the furniture (which is not copyrightable) serves as the vehicle. . .
. the designs are ‘wholly unnecessary’ to the furniture’s utilitarian
function.” Though the designer was necessarily
influenced by function, his judgment was sufficiently independent because his
aim was not to improve utility but to make the pieces pretty.
The Second Circuit, meanwhile, found that elements of a
plush sculpted animal costume could be separable from the overall design
because they were physically separable. By
contrast, it found that a prom dress design was uncopyrightable: the
arrangement of sequins and crystals on the bodice, ruching at the waist, and
layers of tulle on the skirt were neither physically separable (the remaining
dress wouldn’t function as well as a prom dress) nor conceptually separable,
because “the artistic judgment exercised in applying sequins and crystals to
the dress’s bodice and in using ruched satin at the waist and layers of tulle
in the skirt does not invoke in the viewer a concept other than that of
clothing.” The decorative elements
instead enhanced the dress’s functionality for a special occasion, merging
aesthetics and functionality in an attractive way. Though they were artistic, “the decorative
choices . . . merge with those that decide how (and how much) to cover the
body. Thus, a jeweled bodice covers the upper torso at the same time that it
draws attention to it; a ruched waist covers the wearer’s midsection while
giving it definition; and a short tulle skirt conceals the wearer’s legs while
giving glimpses of them.” Because the aesthetic and functional effects were
inseparable, the dress wasn’t copyrightable.
The court here recognized “considerable disagreement” on the
standard. It determined to start with “just what Varsity has copyrighted, and
how Star is claimed to have violated these copyrights.” Varsity claimed copyright in five uniform
designs; Star allegedly infringed by making similar uniforms, photographing
models wearing those uniforms, and publishing photos of the uniforms in its
catalog. The court turned to the language of the statute: “the design of a
useful article, as defined in this section, shall be considered a [PGS] work
only if, and only to the extent that, such design incorporates pictorial,
graphic, or sculptural features that can
be identified separately from, and are capable of existing independently of,
the utilitarian aspects of the article.” The first clause implied conceptual
separability, while the second implied physical separability. Though there’s
considerable overlap, the court thought the two were separate.
Varsity argued that, because its designers sketched
independent of functional influences, its designs were conceptually
separable. Varsity argued that “the
outer edge of the garment merely operates as the edge of a canvas, with
unlimited possibilities therein.”
The court was unpersuaded that Varsity had engaged with a
key issue: “can a cheerleading uniform be conceived without any ornamentation
or design, yet retain its utilitarian function as a cheerleading uniform?” As with the Second Circuit’s prom dress case,
“the combination of braids, chevrons, and stripes on the sketches does not
invoke any concept other than that of clothing.” Those supposedly unconstrained
sketches “are clearly of clothing, in that they depict cheerleading uniforms on
young women who appear to be cheerleaders.” Like a prom dress, a cheerleading
uniform is “a garment specifically meant to cover the body in an attractive way
for a special occasion.” The artistic
judgment involved “does not invoke in the viewer a concept other than that of
clothing,” and the designers always seemed to be thinking of cheerleading
uniforms. “Put another way, a
cheerleading uniform loses its utilitarian function as a cheerleading uniform
when it lacks all design and is merely a blank canvas.” Without the familiar ornamentation, the
silhouette no longer evoked the utilitarian concept of a cheerleading uniform.
Though it might cover the body to the same degree and withstand the rigors of
cheerleading, “the utilitarian function of a cheerleading uniform is not merely
to clothe the body; it is to clothe the body in a way that evokes the concept
of cheerleading.” Artistic judgment was
undeniably important here, but that
didn’t make it separable.
While a desk with carved designs on it is still a desk
without those carvings, “a blank silhouette of a purported ‘cheerleading
uniform’ without team colors, stripes, chevrons, and similar designs typically
associated with sports in general, and cheerleading in particular, is not
recognizable as a cheerleading uniform.”
Thus, the design merges with the utilitarian function here.
If the court were to apply the marketability test, the
result would be the same: “it is unlikely that the designs in this case would
be marketable outside of their utilitarian function as cheerleading uniforms.”
The lack of physical separability also supported the court’s conclusion. Even if you could metaphysically allow the
designs to float free in space, or place them on a different “canvas,” they’d
still look like cheerleading uniforms, as the sublimation process demonstrated:
even physically separated from a uniform, the design “evokes the image and
concept of a cheerleading uniform and proves the difficulty of removing the
design from the utilitarian article. In short, the concept remains the same, even
if the medium changes.”
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