Star Athletica v Varsity Brands: SCOTUS must get into ‘nitty gritty’

With the US Supreme Court due to hear oral arguments in the Star Athletica v Varsity Brands copyright case on October 31, lawyers have told WIPR that the court will have to deal with some “muddy” issues by getting into the “nitty gritty”.

The dispute emerged after Varsity Brands, which produces athletic gear, sued clothing company Star Athletica at the US District Court for the Western District of Tennessee. It claimed that cheerleader uniforms sold by Star Athletica were “substantially similar” to its own.

However, in 2014 the district court rejected the claim and said: “Varsity’s designs are not physically or conceptually separable from the utilitarian function of a cheerleading uniform because ... [they] make the garment they appear on recognisable as cheerleading uniforms.”

The district court said that cheerleader uniforms were not eligible for copyright protection.

A year later, the US Court of Appeals for the Sixth Circuit ruled the other way. Judge Karen Moore, who wrote the majority opinion, concluded that Varsity owned the copyright to the designs and remanded the case back to the district court.

Varsity appealed against the Sixth Circuit’s judgment.

In May this year, the Supreme Court agreed to hear the dispute, and oral arguments begin on October 31.

The question the Supreme Court will answer is: “what is the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act?”

WIPR spoke to intellectual property lawyers about how the court will rule on this dispute.

Laura Ganoza, partner at Foley & Lardner, told WIPR that “the question they will tackle is how to determine the scope of protection for an article that is both useful, serving a function, and artistic, and how you separate one aspect from the other.

“The court is likely to approach this question by reviewing the test used by the Sixth Circuit in rendering its decision and by reviewing other tests such as those used in the Second or Fourth Circuit.

“It’s a muddy issue and the court is going to have to get into the nitty gritty if it wants to set forth a standard that is more clear,” she added.

Dale Cendali, partner at law firm Kirkland & Ellis, added: “Although it may be going a bit far to claim, as Star Athletica has, that ‘this is the most vexing, unresolved question in copyright law’, few would disagree that this is an area of considerable uncertainty, with the circuit courts and the US Copyright Office applying at least ten different tests.

“Many of us who practise in this space are hopeful that the Supreme Court will provide some much-needed clarification in this area.”

Jim McCarthy, partner at McDonnell Boehnen Hulbert & Berghoff, addressed how the parties might approach the question: “Only Star Athletica should call it a uniform. They are arguing that the graphic elements are not separable from the utilitarian function of the uniform itself—that the colours, designs, stripes are what make it identifiable as a cheerleading uniform.

“Varsity should argue that the colours, designs and stripes are purely aesthetic features like a fabric pattern,” he added.

Edward Maluf, partner at Seyfarth & Shaw, said: “Hopefully, the Supreme Court will approach this issue with the understanding that Congress has tried on many occasions to address the issue of copyrightability and fashion design, always without success, and therefore will strive to render a separability test that can work across all platforms and uses.”

He added: “The court will likely find that copyright protection extends to the works at issue, and in the process will endeavour to articulate another new test of separability. It also might reflect on whether Congressional amendment to the existing statute might be useful.”

John DiMatteo, partner at Holwell Shuster & Goldberg, added that some of the world’s most beautiful art work is found in clothing design, so why would courts refuse copyright protection to clothing design because certain features are useful?

“In Star Athletica, the Supreme Court will decide if and how to allow copyright protection to cheerleading uniforms and clothing design in general. The hope and expectation is that the court will greatly expand copyright protection in clothing and thus allow designers to be properly compensated for their works of art.”

David Leichtman, partner at Robins Kaplan, added: “While Star Athletica is ostensibly about cheerleading uniforms, the decision will likely have a much broader import. The Supreme Court is being asked to demarcate the line where ornamental design ends and functional utility begins, which is of increasing significance in a world of 3D printing, artificial intelligence and mobile commerce.

“While the lower courts are not exactly divided, they have articulated a number of different ways to express how to find the line between copyright protection and non-protectable elements. Even though those tests have things in common, the Supreme Court appears to have taken the case to clarify for artists and the industry what can be imitated freely and what cannot,” he added.

Dale Cendali is a WIPR Leader for 2016. Her profile is available  here.