Once a piece of clothing has been styled, cut and shaped according to a designer’s vision, it is a form of expression arguably no less worthy of copyright protection than say, a photograph, painting, or poem. However, the “useful article” doctrine generally denies copyright protection for aspects of clothing design that are considered inherently functional or “utilitarian.” So, for example, the two-dimensional pattern on a dress may be copyrightable, but the three-dimensional cut of the dress is generally not protected by copyright. This is because a two dimensional design usually is thought to be “severable” from the functional purpose of the dress, while the shape of the dress — which serves the functional purpose of fitting the human body — is generally not severable from that function. This “severability” analysis may appear simple on the surface but, as highlighted by a recent opinion issued by the District Court for the Western District of Tennessee in Varsity Brands, Inc. v. Star Athletica LLC, its varied application by different courts sometimes leads to apparently conflicting results.
In 2010, Varsity Brands, which designs, manufactures and sells cheerleading apparel, sued its competitor Star Athletica (“Star”), claiming that Star had infringed on Varsity’s copyrights by incorporating Varsity’s designs onto the surface of Star’s cheerleading uniforms. The challenged design elements did not include the shape or contours of the outfits, but rather consisted of the two-dimensional stripes, colors and other ornamentation familiar to cheerleading uniforms.
Varsity argued that because their designs were sketched independently of the uniform’s functional features, they were separable from the uniform’s functional purpose. However, the District Court disagreed and found that the designs were functional, in that they provided the cheerleading uniforms their “cheerleading uniform-ness.” In other words, the Court found that the designs were utilitarian and not severable from the garment’s function as a cheerleading uniform. As a result, copyright did not protect Varsity’s designs, and the copyright claims were dismissed.
Uniform Function v. Clothing Function
The Court’s opinion appears to conflict with an opinion issued by the Second Circuit in Chosun International, Inc. v. Cherish Creations. In that case, Chosun sued one of its competitors for copying the designs of its full-body animal Halloween costumes. The District Court dismissed the complaint for failure to state a claim on the grounds that, because all aspects of the costumes served the useful function of “masquerading,” the “useful article” doctrine dictated that they were not eligible for copyright protection. On appeal, the Second Circuit vacated this decision, holding that while articles of clothing as a whole were “useful” items that could not be copyrighted, it was possible that certain elements of a costume, including for example the plush sculpted hoods and paws in the plaintiff’s designs, were separable from the costume’s function as clothing and could receive copyright protection.
Thus, in contrast to the District Court in Varsity Brands, which focused on whether any of the designs at issue were severable from a garment’s functional purpose as a cheerleading uniform, the Second Circuit in Chosun looked to whether any elements of the Halloween costumes could be severed from a costume’s functional purpose as clothing. Had the Varsity Brands applied the Second Circuit’s reasoning, Varsity likely would have prevailed because the designs at issue did not enhance the outfit’s functionality as clothing, i.e., its ability to cover the human body.
The case is currently on appeal before the Sixth Circuit. Whether Varsity will prevail the second time around remains to be seen, but the Sixth Circuit’s ultimate decision will certainly make for a useful read.