Among the more problematic lingering questions of copyright law that has divided circuit courts and resulted in different tests is the issue of “separability.”[1] Now, it could be a suit over cheerleading uniforms that finally brings this question before the nation’s highest court for final resolution.[2]
The Copyright Act of 1976 protects, among many other things, “pictorial, graphic, or sculptural” designs on “any tangible medium of expression.”[3] However, a “useful article,” defined as an article with “an intrinsic utilitarian function” beyond portraying appearance or information, is not copyrightable.[4] This creates a serious dilemma for creative designs of clothing, cars, and other “useful” items. To what extent can the design of an article of clothing be separated from its function as an article of clothing?
As of the Sixth Circuit’s decision in Varsity Brands, Inc. v. Star Athletica, LLC, there are no fewer than ten different tests rendered to answer this question.[5] A few of these tests are the present common law in their respective circuits, creating confusion for creative companies and consumers that are left trying to navigate around registered copyrights.[6]
Varsity Brands copyrighted five different designs of cheerleading uniforms, and sued Star Athletica for infringement.[7] The district court granted summary judgment to Star Athletica, finding that the designs of the uniforms were inseparable from their functions as cheerleading uniforms associating with their franchises or schools.[8] The Sixth Circuit, however, defined the function of cheerleading uniforms more narrowly for its athletic purposes, and found that the design elements of the uniform were conceptually separable from the physical functionality.[9] In the course of reaching this decision, the court slogged through the various tests existing at the time, and crafted its own test to fit the majority’s understanding of the question.[10]
Star Athletica has filed a petition for a writ of certiorari, asking the Supreme Court to settle this question once and for all.[11] The petition has been welcomed by various organizations interested in copyright law, and two amicus briefs have been filed in support of the petition, representing the various industries with stakes in the resolution of this question.
One of the briefs, filed by Public Knowledge,[12] the Royal Manticoran Navy,[13] and the International Costumers’ Guild,[14] is concerned primarily with Star Athletica’s contention that a function of cheerleading uniforms is the association with the franchise or school that the cheerleaders are supporting.[15] Classifying the association as a function would restrict the separability of the uniform designs to a far greater extent than was done by the Sixth Circuit in finding its narrower definition of the function of the uniforms.[16] By contrast, rejecting association as a function of clothing would inhibit not only competing uniform designers, but also costume designers who are primarily concerned with associating their designs with a particular copyrighted source of inspiration.[17] In effect, a broader scope of copyright on fashion designs inhibits creativity not only by competitors, but also by consumers.
The other amicus brief was filed by a trio of companies in the 3D printing industry, asserting that the question of separability extends far beyond fashion design.[18] The legal confusion created by the various distinct tests on separability employed by the various circuit courts around the country hinders creativity and innovation among those who use 3D printing for design purposes.[19] It is easy to see how this confusion spreads to design and innovation in other industries.[20]
There is clearly widespread interest in the Supreme Court finally settling the issue of separability that has divided the circuit courts. Having a nationally uniform test or standard on separability would clear a path for creativity and innovation that minimizes conflict with existing copyrights.[21] Perhaps a suit over cheerleading uniforms can make this happen.