Varsity Brands, Inc. v. Star Athletica, LLC
799 F.3d 468
| 6th Cir. | 2015Background
- Varsity owns copyrights for five two-dimensional graphic designs on cheer uniforms; Star markets similar designs and alleged infringement.
- District court granted Star summary judgment, holding Varsity’s designs are unprotectable useful-article designs with non-separable aesthetic elements.
- Lawsuits include federal copyright claims and state-law claims (unfair competition, contract inducement, conspiracy); district court dismissed state-law claims.
- This appeal asks whether Varsity’s cheer-uniform designs are protectable pictorial/graphic/sculptural works and separable from utilitarian function.
- Court adopts a hybrid separability approach and reverses in part, holding graphic features are protectable and remanding for further proceedings, including potential diversity-based remand.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are Varsity’s designs protectable as pictorial, graphic, or sculptural works? | Varsity argues separable, non-functional elements exist. | Star argues the designs are unprotectable as useful-article designs. | Yes; the designs are protectable graphic works. |
| Does registration create a presumption of validity for these designs? | Registration should yield deference; Copyright Office decisions should be given Skidmore/Chevron deference. | Registration is not a rule of law; limited deference. | Copyright Office determinations deserve Skidmore deference; not Chevron. |
| Is a design of a cheer uniform a design of a useful article, and can separability apply? | Two-part test: design must be separable and capable of existing independently of utilitarian aspects. | Separability should be limited; aesthetic features merge with function. | Two-part inquiry required; separable graphic features may exist. |
| What separability framework should govern analysis? | Support a principled, text-based approach emphasizing separability. | Prefer a uniform, single test for separability. | Adopts hybrid approach, allowing conceptual separability considerations. |
| What about the district court’s dismissal of state-law claims and potential diversity jurisdiction? | Remain in federal court; preserve claims and potential diversity basis. | Remand not required if federal claim resolved. | Vacates and remands; permits amendment to satisfy diversity and proceed with state-law claims. |
Key Cases Cited
- Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.1980) (designs may be separable elements under copyright)
- Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir.2005) (conceptual separability can sustain copyright in designs on costumes)
- Pivot Point Int’l Inc. v. Charlene Prods., Inc., 372 F.3d 913 (7th Cir.2004) ( Hoffman design-process and separability approaches)
- Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417 (4th Cir.2010) (decorative elements on useful articles may be copyrightable)
- Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir.2005) (likelihood-of-marketability approach discussed in context of separability)
- Jovani Fashion, Inc. v. Cinderella Divine, Inc., 808 F.Supp.2d 542 (S.D.N.Y.2011) (decorative features of clothing often merge with function; not separable)
- Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir.1996) (discussed conceptual separability in design)
- Mazer v. Stein, 347 U.S. 201 (1934) (early framework for separating artistic features from utilitarian objects)