Cheerleading Uniforms and Copyright Separability

• Jurisdiction: United States,Federal
• Citation: Vol. 39 No. 3
• Publication year: 2014
• Author: Tony Sarabia
• topic: Trademark,Intellectual Property,Copyright law

Cheerleading Uniforms and Copyright Separability

Tony Sarabia

IP Business Law, Inc.

Steven Crosby

Feldman Law Group, PC

Copyright lawyers are intimately familiar with the doctrine of substantial similarity, but many never experience copyright law's useful article doctrine. The useful article doctrine, also known as the applied art doctrine, serves an important public policy by preventing copyright holders from obtaining a back-door longer-term patent on a functional article while side-stepping the relatively high novelty and obviousness hurdles of patent examination. To illustrate, an etching of a shoe may be copyrightable as a two-dimensional artwork depicting an athletic shoe, but the scope of copyright protection may not extend to the functional design elements of the shoe itself.¹ The court in Eliya, Inc. v. Kohl's Dept. Stores found that the design elements depicting the shoe at issue were not sufficiently separable from the functional components of the shoe itself to warrant the relatively long-term protections of copyright and that the aesthetic aspects of the design merged with the functional aspects of the athletic shoe.²

Starting in 2007 a series of bills was introduced in Congress to grant short-term (several years) copyright protection to original fashion designs.³ The reason for the introduction of these bills is that the current copyright regime does not protect apparel designs because they are considered to be functional. These bills propose to change that by carving out a fashion exception to the functionality exclusion of copyright protection.

There are appropriate and legitimate uses of copyright protection in connection with apparel. For example, an apparel company may create an original design on fabric such as a combination of branches and leaves. The company could obtain a copyright registration for this design. The design may be applied to fabric by screen printing, weaving or embroidering. Fabric generally comes in rolls and the design would be repeated throughout the roll of fabric. Copyright protection could also be used for many other ornamental features of garments, such as the design on a button or the design on the back pocket of a jean—it is the design that would be protected, not the button or the pocket.

On March 1, 2014, the United States District Court for the Western District of Tennessee issued a thoughtful copyright separability decision in an apparel case involving cheerleading uniforms. Although this district is not known as a hotbed of copyright and apparel litigation, the ruling featured a sophisticated and careful analysis of one of the more difficult copyright doctrines. The case applied copyright separability analysis to five designs on cheerleading uniforms—e.g., the colors, shapes, braids, stripes and chevrons—and granted summary judgment for the defendant in Varsity Brands v. Star Athletica.⁴

The Varsity case involved competing cheerleading uniform companies. The Varsity plaintiffs claimed that its copyrights for designs on cheerleading uniforms should prevent the defendant Star Athletica from making cheerleading uniforms with similar designs on uniforms. See the sample registration reproduced below.

[insert image of copyright registration here]

[Page 11]

Varsity filed sketches with the Copyright Office for three of its designs and described them as two-dimensional artwork. The remaining two registrations were registered as fabric design (artwork) and the deposit was a photograph of a completed uniform incorporating the design. varsity focused its claims of copyright on certain design features in the deposits: primarily stripes and chevrons. varsity saw its copyrights as designs independent of clothing, yet the stripes and chevrons were common and basic elements of cheerleading uniforms. Star saw the copyrights as functional concepts that were inseparable from the nature of a cheerleading uniform. While sketches and drawings are clearly copyrightable, as prior cases have determined, they cannot be used to control the production of functional items:

• The owner of a drawing of a chair cannot prevent the manufacture of chairs of that design;
• The owner of a scale model of an automobile cannot stop the manufacture of automobiles with the same design;
• The owner of a picture of a dress cannot stop the manufacture of dresses like those in the picture.⁵

The Copyright Act does not protect useful articles, and clothing, such as cheerleading uniforms, are generally considered to be useful articles. However, the Copyright Act does allow for the protection of design elements of clothing, but only when those elements are physically or conceptually separable from the garment itself. Designs on fabric, such as floral patterns, may be protected by copyright.⁶ But the design of the shirt, skirt, or dress made of that fabric is not protectable. The design of a useful article is protectable as a...