On August 19, 2015, the Sixth Circuit Court of Appeals issued a “V-I-C-T-O-R-Y” for the world’s largest designer and manufacturer of cheerleader uniforms in its copyright infringement lawsuit against another cheerleading gear company. In a 2-1 decision, in Varsity Brands, Inc. v. Star Athletica, LLC, the appellate court held that the colors, stripes, chevrons, and similar graphic designs of the plaintiff’s cheerleading uniforms “are copyrightable pictorial, graphic, or sculptural works” and are “not uncopyrightable useful articles.” The court, therefore, reversed summary judgment dismissing plaintiff’s claims.

First, the Sixth Circuit held that the district court erred by failing to give greater deference to the Copyright Office’s determination that the plaintiff’s registered graphic designs at issue “are non-functional and separable from the utilitarian aspects of the [cheerleading uniforms] to which they are affixed.” The court cited to Skidmore v. Swift & Co., 323 U.S. 134 (1944), which instructs that agency interpretations of a statute (here the Copyright Act) deserve “respect proportional to [the interpretations’] ‘power to persuade,’” when an agency, like the Copyright Office, has “specialized experience and broader investigations and information available” than those available to the judiciary.

The Sixth Circuit then concluded that plaintiff’s graphic designs are copyrightable because they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of” cheerleading uniforms. 17 U.S.C. § 101. Although the majority recognized that “it is difficult to . . . [determine] whether an artistic design is conceptually separable from the utilitarian aspects of the article,” it adopted a hybrid approach similar to that previously applied by the Second and Fourth Circuits. Specifically, the majority “ask[ed] a series of questions that are grounded in the text of the Copyright Act,” 17 U.S.C. § 102:

(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 — “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”? . . .

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

(4) Can the viewer of the design identify “pictorial, graphic, or sculptural features” “separately from . . . the utilitarian aspects of the [useful] article[?]” 17 U.S.C. § 101.

(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[?]” Id. 

Applying this test, the majority found that “the arrangement of stripes, chevrons, color blocks, and zigzags [on the cheerleader uniforms] are wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement, and wick moisture.” For example, the court pointed out that “[a] plain white cheerleading top and plain white skirt still cover the body and permit the wearer to cheer, jump, kick, and flip.” The court also determined that the graphic features on the uniforms are more like fabric designs, for which copyright protection is well-established, as opposed to dress designs. Fabric designs serve no other function than to make a garment more attractive, while dress designs have components that are inextricably connected with the utilitarian aspects of the clothing – i.e., “pockets store pencils or pens; pants and skirts cover the legs; shirts cover the torso modestly or less modestly depending on the neckline.”

Judge McKeague dissented, opining that designs of the cheerleader uniforms should not be copyrightable because they cannot be conceptually separated from the core function of the uniforms: “to identify the wearer as a cheerleader.” The dissent explained that, “[w]ithout stripes, braids, and chevrons, we are left with a blank white pleated skirt and crop top.” “The reasonable observer would not associate this blank outfit with cheerleading. This may be appropriate attire for a match at the All England Lawn Tennis Club, but not for a member of a cheerleading squad.” The dissent also stressed that “[t]he law in this area is a mess” and it would be helpful for “either Congress or the Supreme Court (or both) [to] clarify copyright law with respect to garment design.” Without clarification, “courts will continue to struggle and the business world will continue to be handicapped by the uncertainty.”

And parties will be left to “FIGHT, FIGHT, FIGHT!” over the law in these clothing design copyright actions.