IP Law Daily Supreme Court agrees to hear case on copyrightability of ‘useful articles’
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Monday, May 2, 2016

Supreme Court agrees to hear case on copyrightability of ‘useful articles’

By Thomas Long, J.D.

Athletic and cheerleading uniform maker Star Athletica, L.L.C., has been granted U.S. Supreme Court review regarding the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act. At issue is a decision of the U.S. Court of Appeals in Cincinnati, holding that a federal district court erred when it held that designs for cheerleading uniforms owned by Varsity Brands, Inc., were not copyrightable because the graphic elements of those designs were not separable from the utilitarian function of a cheerleading uniform. Star Athletica also requested High Court review of the Sixth Circuit’s decision that a registration issued by the Copyright Office was entitled to Skidmore deference with respect to protectability findings, but the Court did not grant certiorari with respect to that question.

District court decision. Varsity Brands and related companies Varsity Spirit Corporation and Varsity Spirit Fashions & Supplies accused Star Athletica of producing cheerleading uniforms with graphic designs that were substantially similar to Varsity’s copyrighted designs. The district court awarded summary judgment to Star Athletica, determining that the registered designs were unprotectable as useful articles. In the district court’s view, the uniforms’ features—stripes, chevrons, zigzags, and colorblocks—were necessary for the uniforms to be cheerleading uniforms. The district court also decided that the presumptive validity of the registered designs was easily rebutted because of the Copyright Office’s tendency to perform only "cursory" analyses of protectability when issuing registrations.

Sixth Circuit "hybrid" test for useful articles. On appeal, the Sixth Circuit vacated and remanded. The appellate court established a "hybrid" approach to determining whether the design of a useful article incorporated pictorial, graphic, or sculptural features that could be identified separately from, and were capable of existing independently of, the utilitarian aspects of a useful article. Under the test devised by the Sixth Circuit, the court asked a series of questions: (1) Is the design a pictorial, graphic, or sculptural work? (2) If so, is it a design of a useful article? (3) What are the utilitarian aspects of the useful article? (4) Can the viewer of the design identify the pictorial, graphic, or sculptural features separately from the utilitarian aspects of the useful article? and (5) Can the pictorial, graphic, or sculptural features of the design of the useful article exist independently of the utilitarian aspects of the useful article?

Applying this test, the Sixth Circuit concluded that the graphic features of Varsity’s designs could be identified separately from, and were capable of existing independently of, the utilitarian aspects of cheerleading uniforms. Accordingly, the court ruled that Varsity’s graphic designs were copyrightable subject matter.

Star Athletica’s arguments in favor of granting review. In its petition for certiorari, Star Athletica urged the Supreme Court to resolve a multi-circuit conflict regarding the appropriate test to apply when determining which features of a useful article can be protected by copyright. Star Athletica noted that at least 10 separability tests have been articulated by circuit courts, the Copyright Office, and academics. The Sixth Circuit’s new "hybrid" approach, Star Athletica argued, was inferior to the approaches taken by other circuits.

The petition for certiorari in Star Athletica, L.L.C. v. Varsity Brands, Inc., Docket No. 15-866, was granted May 2, 2016, limited to Question 1 presented by the petition: "What is the appropriate test to determine when a feature of a useful article is protectable under §101 of the Copyright Act?"

Attorneys: John J. Bursch (Warner Norcross & Judd LLP) for Star Athletica, L.L.C. William M. Jay (Goodwin Procter LLP) for Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc.

Companies: Star Athletica, L.L.C.; Varsity Brands, Inc.; Varsity Spirit Corporation; Varsity Spirit Fashions & Supplies, Inc.

MainStory: TopStory Copyright

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