Addressing for the first time the question of whether “cheerleading uniforms [are] truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks” the U.S. Court of Appeals for the Sixth Circuit answered in the affirmative. The 6th Circuit vacated summary judgment entered in favor of the defendant and held that because the aesthetic designs of a cheerleading uniform are “separable” from the purpose of the uniform, which is to wick away moisture and permit the wearer to jump, kick and flip, Varsity’s designs are copyrightable. Varsity Brands et al. v. Star Athletica, Case No. 14-5237 (6th Cir., Aug. 19, 2015) (Moore, J., joined by Guy, J.) (McKeague, J., dissenting).

Under the Copyright Act, “useful articles” (i.e., articles having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information) is copyrightable “only if, and only to the extent that, such design incorporates . . .  graphic . . .  features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” (17 U.S.C. §§ 101, 102.) Varsity sued Star for infringing Varsity’s registered copyrights on its cheerleading uniform designs. The district court (and the dissent) agreed with Star, finding that the aesthetic features of the uniform had merged with the functional purpose of the uniform, which is to identify the wearer as a cheerleader.

On appeal, the 6th Circuit first decided the Copyright Office’s determination that a design is protectable is only entitled to Skidmore—not Chevron—deference and that it is defendant’s burden to overcome the rebuttable presumption of validity.

Next, the 6th Circuit considered various approaches other circuits have formulated to determine whether a graphic incorporated into the design of a useful article can be identified separately from, and is capable of existing independently of, the functional aspects of the article when those graphical features cannot be removed physically from the article. The 6th Circuit fashioned a hybrid approach asking six questions:

1. Is the design a pictorial, graphic or sculptural work?

2. If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article? If not, then there is no need to ask about whether the design could be separated from the useful article.

3. What are the utilitarian aspects of the useful article?

4. Can the viewer of the design identify the graphic features separately from the utilitarian aspects?

5. If not, then the design of the useful article is not copyrightable.

6. If so, then can the graphic features of the useful article exist independently of the utilitarian aspects? For example, can those graphic features be ripped off the article without rendering the article useless? Can the graphic features be incorporated onto other articles?

Applying this hybrid approach, the 6th Circuit concluded that the uniforms have an “intrinsic utilitarian function” namely to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” The court reasoned that the zigzags and chevrons did not enhance the functionality of the uniform since the wearer can still cheer, jump, kick and flip without those graphics. Moreover, the graphics could exist independently because they could be transferred onto other types of garments.

The dissent argued that the designs are integral to its function: to identify the wearer as a cheerleader and a member of a cheerleading squad. While clothing provides many functions, a uniform, argues the dissent, at its core, identifies the wearer as a member of a group such that separating the design from the useful article defeats the purpose of the garment.

Practice Note: Whether a garment design is copyrightable or not may turn on how the court chooses to define the function of the garment. Copyright owners should consider narrow definitions where the decorative elements of the garment may be characterized as intrinsic to the overall function, rather than separable from it.