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Sixth Circuit Delves into Murky Issue of Conceptual Separability over Copyrightability of Cheerleading Uniform Designs

On August 19, 2015, the U.S. Court of Appeals for the Sixth Circuit ruled that the decorative designs on a cheerleading uniform is copyrightable, reversing a lower court’s decision that the uniform's decorative elements could not be protected by copyright.  The decision is the latest dive into an area of copyright law that has “confounded courts and scholars,” as the Sixth Circuit panel described it.  

In brief, the majority concluded that the stripes, chevrons, zigzags and color block designs on the uniform in question are protectable because those visual elements are conceptually separable from the “utilitarian aspects” of the uniforms—which, broadly defined, are to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” 

The majority of the three judge appellate panel disagreed with the determination made by the court below that “a cheerleading uniform is not a cheerleading uniform” without those design elements, noting that a “[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 concluded that the arrangement of the design features are “wholly unnecessary to the performance of” the uniform’s ability to serve its utilitarian function, and are therefore conceptually separable.

The Copyright Act provides that “useful articles”—those “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”—receive protection “only if, and only to the extent that, [they] incorporate[] pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  This "separability" rule is designed to prevent copyright law from impeding free competition in the manufacture and sale of useful articles, but it has proven to be complicated to apply in practice.  In particular, because apparel items have both functional and creative design aspects, the separability rule has been notoriously difficult to apply, causing courts to find that many works of fashion are not protectable through current copyright law.

Courts have adopted various different approaches to the conceptual separability doctrine.  In fact, the Sixth Circuit’s surveyed nine different approaches that courts have taken as they “struggled mightily to formulate a test” to determine whether a piece of apparel is copyrightable. 

The opinion is notable in that the Sixth Circuit has now formulated a unique approach of its own, creating a new five-part test to reach its conclusion.  At the end of the day, though, the court relied on well-settled copyright principles to reach its determination, drawing the following analogy: “The Copyright Act protects fabric designs, but not dress designs. Because we believe that graphic features of Varsity’s cheerleading-uniform designs are more like fabric design than dress design, we hold that they are protectable subject matter under the Copyright Act.” 

Dissenter Judge David McKeague, who advocated for a far narrower approach to defining the “function” of a cheerleading uniform, nevertheless agreed with the majority with respect to the messy state of the law in the area of garment design, calling for much-needed guidance from Congress and/or the Supreme Court. 

This post was prepared by Gibson Dunn associate Naomi Takagi.

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