Members of Indiana legal community weigh in on ‘metaphysical quandary’

Before the Supreme Court of the United States heard arguments Monday morning on an issue that has been described as a “metaphysical quandary,” the Indiana legal community offered some guidance.

The eight justices considered Star Athletica LLC v. Varsity Brands, Inc., 15-866, which came from the 6th Circuit Court of Appeals. Central to the dispute is the question of what test should be used for determining whether a design element can be separated and copyrighted from an item that is unprotectable because it has a useful, utilitarian function.

Among the amicus curiae briefs filed were two with Indiana connections.

The brief from the Intellectual Property Professors was co-authored by Mark McKenna, associate dean of Notre Dame Law School. Another brief from the American Intellectual Property Law Association listed Amie Peele Carter, partner at Faegre Baker Daniels LLP in Indianapolis, as counsel of record.

In this case, the 6th Circuit boiled the dispute down to one question – “Are cheerleading uniforms truly cheerleading uniforms without the stripes, chevrons, zigzags, and color blocks?”

Varsity and Star Athletica are both makers of cheerleading gear. The original lawsuit charged that Star Athletica was infringing on the copyrighted graphic designs that Varsity had created to decorate its uniforms.

The U.S. District Court for the Western District of Tennessee at Memphis rendered Varsity’s copyright claim invalid because the graphic elements were not separable. In other words, a cheerleading uniform is not a cheerleading uniform without the stripes, chevrons, zigzags and color blocks.

However a split 6th Circuit reversed and entered partial summary judgment for Varsity. The majority noted courts have “struggled mightily” to develop a test that can be used to determine whether the pictorial, graphic or sculptural features  incorporated into the design of a useful article can be separated and protected by copyright even when those same features cannot be physically removed from the article.

Through an analysis of five questions, the majority concluded the graphic features of Varsity’s uniforms could be separated and were capable of existing independently of the utilitarian aspects of the cheerleading uniforms.

Circuit Judge David McKeague agreed with the majority’s approach but disagreed with the conclusion. He argued Varsity’s features were not conceptually separate and therefore not copyrightable.

He ended his dissent with a call for help.

“It is apparent that either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design,” he wrote. “The law in this area is a mess – and it has been for a long time. … [U]ntil we get much-needed clarification, courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law.”

The briefs from McKenna and Peele stake out different positions on the question of how to determine separability and protectability.

McKenna and the Intellectual Property Professors, in support of Star Athletica, advocated for the court to adhere to the test Congress put in place that made conceptual design a coda to physical separability.

Pointing to the Congressional House Report Rep. No. 94-1476, the professors contended Capitol Hill meant to protect features of useful articles that could exist as a separate copyrightable work in some other medium. At the same time, it meant to exclude features that were integrated into a work of industrial design and that only make sense as part of that useful article.

Carter and the American Intellectual Property Law Association did not support either party.

The association advised that the Supreme Court not select one test to determine whether a design element can be separated and copyrighted from the utilitarian aspects of the article. Depending on the useful article involved, one of the multiple tests might be better than the others at determining separability.

First, the association argued, the courts should identify whether an article contains pictorial, sculptural and graphic design elements. If not, the inquiry ends and the work is not protectable under the Copyright Act. If so, then the next question is whether those design elements can be separated from the utilitarian features of the article.