By Nathan Roy

It is invariably difficult to predict the circumstances from which a prominent legal decision will emerge. Thus, it should come as no surprise, at least to those in the legal community, that the United States Supreme Court will use cheerleading uniforms to determine the scope of copyright infringement. The case, Star Athletica v. Varsity Brands, Inc., went before the Court on October 31, 2016. [1] Although seemingly ridiculous, the implications could be extensive and may impact the entire garment business as well as other industries reliant upon copyright protection.[2]

The case presents an age-old issue: how to distinguish between “design” and “utility” for the purposes of copyright.[3] According to Ronald Mann, courts generally construct copyright protections to encompass only expressions of ideas, not ideas in their conceptual state.[4] Within the garment industry specifically, a manufacturer’s protectable interests include only the “design” features of clothing, not the features considered “useful” or fundamental to the purpose of the clothing itself. For instance, there is a protectable interest in fabric designs, but features such as pockets and necklines are not protected because they are considered inseparable from the outfit’s primary purpose: covering the body.[5] Therefore, the Court must determine whether Varsity Brands, Inc. (“Varsity”) enjoys a protectable interest in its uniform design, or whether the design features of a cheerleading uniform are fundamental to the outfit’s primary purpose or separable pursuant to copyright precedent.[6]

The parties include two competing designers in the cheerleading uniform market: Varsity and Star Athletica. Varsity, the industry’s dominant force, sued Star Athletica, a much smaller design firm, for copyright infringement of various uniform designs.[7] A lower court found that the design features of Varsity’s uniforms could not be conceptually separated from the uniform itself because such features proved to be fundamental to the outfit’s chief purpose.[8] The Sixth Circuit Court of Appeals, which referred to the issue of “separability” as a “metaphysical quandary,”[9] overruled the lower court’s findings, stating that pictorial, graphic, or sculptural features are not “inextricably intertwined with the utilitarian aspects of a cheerleading uniform because they serve a decorative function.”[10] The court further concluded that “a pictorial, graphic, or sculptural work’s ‘decorative function’ does not render it unable to ‘be identified separately from,’ or ‘[in]capable of existing independently of, the utilitarian aspects of the article.’”[11]

The respective positions of both parties reflect the dichotomous nature of “separability.” On one hand, Star Athletica questions the validity of copyright protection in the garment industry, favoring a categorical rule that excludes such protection for garments, unless a design feature is separable from the useful elements of the article of clothing. [12] Conversely, Varsity argues that two-dimensional designs, if able to exist on a tangible medium such as a piece of paper, are separable from the functional aspects of garments, and thus, require copyright protection.[13]

Although the Court will seriously consider adopting Star’s bright-line rule, it is difficult to envision a decision in which copyright protection is wholeheartedly eliminated from the garment industry. As Mann notes, “the U.S. Copyright Office has had an unbroken tradition of accepting registration of graphic designs used on clothing for many decades.”[14] Regardless, the Court must consider the far-reaching implications of this case, particularly within the $330 billion garment industry.[15] While it is conceivable that the Court will favor Varsity’s rule, such a decision is disconcerting, as the potential for an unbreakable monopoly in the cheerleading industry might achieve fruition. However, the Court should consider the efficacy of a bright-line rule, one that enables lower courts to resolve “separability” issues efficiently.[16] Nonetheless, the Court has an opportunity to backflip its way out of the status-quo and to adopt an articulable rule in the perplexing field of “separability.”

[1] Ronald Mann, Argument Preview: Court to Consider Copyright Protection for Cheerleading Uniforms, SCOTUSBlog.com (Oct. 24, 2016, 10:06 AM)


[2] See Lyle Denniston, Useful or Creative: A Look at Design Protection, SCOTUSBlog.com (May 2, 2016, 2:26 PM) https://www.scotusblog.com/2016/05/useful-or-creative-a-look-at-design-protection/; see also Eriq Gardner, Supreme Court to Hear Fight Over Cheerleader Uniforms, The Hollywood Reporter (May 2, 2016) https://www.hollywoodreporter.com/thr-esq/supreme-court-hear-fight-cheerleader-889321 (noting that Hollywood has a stake in this issue, including directors, companies, and fans).

[3] Mann, supra note 1.


[4] Id.; see also Mazer v. Stein, 347 U.S. 202, 217 (1954) (“Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given to the expression of the idea – not the idea itself.”).


[5] Chris Morris, A Fight Over Cheerleading Uniforms Is Heading to the Supreme Court, Fortune (May 2, 2016) https://fortune.com/2016/05/02/cheerleading-uniforms-supreme-court/.


[6] See Mann, supra note 1.


[7] Denniston, supra note 2.


[8] Id.


[9] Varsity Brands, Inc. v. Start Athletica, 799 F.3d 470, 494 (6th Cir. 2015) (McKeague, J. dissenting) (recognizing the problematic nature of separability for the legal world).


[10] Id. at 490.


[11] Id. (quoting 17 U.S.C. § 101 (2010)).


[12] See Mann, supra note 1.


[13] See id.


[14] Id.


[15] Morris, supra note 5 (stating that the Court’s decision could significantly impact the decision-making for companies who create knock-offs for expensive brands).


[16] See Gardner, supra note 2 (acknowledging the unpredictability of “separability” analyses in different jurisdictions).

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