Are cheerleading uniform designs eligible for federal copyright protection? Last week, the United States Supreme Court granted certiorari in the case of Star Athletica, LLC v. Varsity Brands, Inc., promising an answer to that question. At issue is whether combinations of stripes, chevrons, and color blocks that appear on cheerleading uniforms are protected by federal copyright law.
The Copyright Act offers limited protection to “useful articles” such as furniture or clothing — items that have intrinsic functionality. Although the Copyright Act protects pictorial, graphic, and sculptural works, a design incorporated into a useful article is only eligible for copyright protection if it is conceptually separable from the utilitarian aspects of that article. Under this “doctrine of separability,” if a chair has design elements that can be peeled away from the underlying purpose of the chair and can exist and be perceived independently of the chair’s underlying purpose, those design elements might be eligible for federal copyright protection. If this doctrine seems unclear, you are not alone in your assessment.
Determining whether a feature of a useful article can be conceptually separated from that article and protected under copyright law is a puzzle that some have called a “metaphysical quandary” and “the most vexing, unresolved question in copyright law.” Over ten different tests, some academic, some judicial, have been formulated and adopted by courts struggling to apply the doctrine of separability. The result is an incoherent patchwork scheme of copyright protection where the protectability of features of useful articles under the Copyright Act can turn entirely on which Circuit adjudicates a copyright case.
The Supreme Court’s opportunity to provide a uniform test for separability analysis arrives via a dispute that, fittingly, involves uniforms. Varsity Brands, the world’s largest cheerleading uniform manufacturer and distributor, sued industry newcomer Star Athletica for copyright infringement after Star Athletica published a catalogue of cheerleading uniforms that Varsity alleged too closely mirrored Varsity’s copyright-registered designs. Varsity owns a number of copyright registrations for the designs that appear on the cheerleading uniforms it manufactures and distributes: combinations of stripes, chevrons, and color blocks.
At the district court level, the court held that Varsity’s designs were not copyrightable because the utilitarian function of a cheerleading uniform and the designs themselves are not conceptually separable. Interestingly, according to the district court, stripes, chevrons, and color blocks are functional aspects of a cheerleading uniform, and a cheerleading uniform without these elements is not a cheerleading uniform.
On appeal, the Sixth Circuit reached an opposite conclusion, holding that Varsity’s designs were protected by copyright because the utilitarian function of a cheerleading uniform and the designs themselves are conceptually separable. In the Sixth Circuit’s view, stripes, chevrons, and color blocks serve no utilitarian function, do not impact a cheerleading uniform’s ability to function as an item of clothing, and are merely decorative as applied to cheerleading uniforms.
In granting certiorari, the Supreme Court has taken on the challenge of sorting through this “metaphysical quandary” to provide a uniform test for determining when a feature of a useful article is protectable under the Copyright Act. Any guidance the Court provides on useful articles and whether the stripes on a cheerleading uniform and the uniform itself are conceptually separable from one another is likely to have a significant impact both upon established industries such as fashion and upon fledgling industries such as 3D printing. The Court is expected to hear arguments in Star Athletica, LLC v. Varsity Brands, Inc. in the Fall 2016 Term. — Mary Witzel
 The Petition for Writ of Certiorari also raised the question of the appropriate level of deference courts should provide to determinations made by the Copyright Office. The Supreme Court declined to grant certiorari on this question.
 Universal Furniture Int’l v. Collezione Europa, Inc., 618 F.3d 417, 434 (4th Cir. 2010).
 Star Athletica, LLC. v. Varsity Brands, Inc., No. 15-866, 2016 WL 94219 (Filed Jan. 5, 2016) (Pet. Writ of Cert).