Lead Opinion
MOORE, J., delivered the opinion of the court in which GUY, J., joined. McKEAGUE, J. (pp. 494-97), delivered a separate dissenting opinion.
OPINION
Are cheerleading uniforms truly cheer-leading uniforms without the stripes, chevrons, zigzags, and color blocks? That is the question that strikes at the heart of this appeal. Plaintiffs-Appellants Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc. (collectively “Varsity”) have registered •copyrights for multiple graphic designs that appear on the cheerleading uniforms and warm-ups they sell. Defendant-Appellee Star Athletica, LLC, also sells cheerleading gear bearing graphic designs that, according to Varsity, are substantially similar to the designs for which Varsity has valid copyrights. Star asserts that Varsity’s copyrights are invalid because the designs at issue are unprotectable “design[s] of ... useful article[s].” 17 U.S.C. § 101 (2012). The district court concluded that a cheerleading uniform is not a cheer-leading uniform without stripes, chevrons,
For the reasons we now ■ explain, we REVERSE the district court’s judgment and enter partial summary judgment for Varsity with respect to whether Varsity’s designs are copyrightable pictorial, graphic, or sculptural works, and REMAND the case for further proceedings consistent with this opinion.
I. BACKGROUND
Varsity designs and manufactures apparel and accessories for use in cheerleading and other athletic activities. R. 170 at 1 (Joint Statement of Undisputed Facts (“JSUF”) ¶ 1) (Page ID # 2228). It employs designers who sketch design concepts consisting of “original combinations, positionings, and arrangements of elements which include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s, coloring, and shapes____” R. 173 at 2-3, 6 (Pis.’ Statement of Undisputed Facts (“PSUF”) ¶¶ 1, 4, 21) (Page ID # 2385-86, 2389); R. 173-2 at 4-5 (Williams Deck ¶ 8) (Page ID # 2439-40). When creating these designs, the designers do not consider functionality of the uniform or the ease of producing a full-sized uniform that looks like the sketch. R. 173 at 2-3, 6 (PSUF ¶¶ 4-5, 21) (Page ID #2385-86, 2389); R. 173-2 at 4-5 (Williams Deck ¶ 8) (Page ID #2439-40). After a designer completes a sketch, Varsity decides whether to implement that design concept for cheerleading or other uniforms, or whether to abandon the design concept altogether. R. 173 at 4 (PSUF ¶¶ 11-12) (Page ID # 2387). Once Varsity selects a design for production, the production crew re-creates the design using one of four methods to create a cheerleading uniform: “cutting and sewing panels of fabric and braid together”; sublimation;
Varsity sought and received copyright registration for “two-dimensional artwork” for many of its designs, including the following designs, which are the subject of this lawsuit:
i
Design 074
Registration No. VA 1-411-535
R. 1-15 at 2 (Compl. Ex. 15) (Page ID #48); R. 1-16 at 2-3 (Compl. Ex. 16) (Page ID # 51-52); R. 1-17 at 2 (Compl. Ex. 17) (Page ID #54); R. 1-18 at 2 (Compl. Ex. 18) (Page ID # 57); R. 51-1 at 2 (1st Am. Compl. Ex. 9) (Page ID # 536).
Star markets and sells uniforms and accessories for football, baseball, basketball, lacrosse, and cheerleading. R. 170 at 2 (JSUF ¶ 5) (Page ID #2229). Varsity filed this lawsuit after seeing Star’s marketing materials and noticing that Star was advertising cheerleading uniforms that looked a lot like Varsity’s five registered designs. See R. 1 at 3-4, 6-10 (Compl.1Hf 13-15, 27-53) (Page ID #3-4, 6-10). Varsity alleges five claims of copy
At the close of the discovery period, both parties filed motions for summary judgment. Star argued that it was entitled to summary judgment on all of Varsity’s claims. With respect to Varsity’s copyright-infringement claims, Star argued that Varsity does not have a valid copyright in the five designs for two reasons: (1) Varsity’s designs are for useful articles, which are not copyrightable; and (2) the pictorial, graphic, or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms, making the designs ineligible for copyright protection. R. 168 at 2 (Def.’s Mot. for Summ. J.) (Page ID #2121). Varsity asserted a right to summary judgment, as well, arguing that its copyrights were valid because the designs were separable and non-functional, and that Star infringed those valid copyrights. R. 172 at 1-2 (Pis.’ Mot. for Summ. J.) (Page ID # 2300-01). Varsity also sought dismissal of Star’s counterclaims. Id. In response to Varsity’s • motion for summary judgment, Star primarily focused on whether Varsity’s designs were unprotéctable useful articles, see R. 176-2 at 8-13 (Def.’s Combined Mem. of Law in Opp’n to Pi’s Mot. for Summ. J. and Reply in Supp. of Def.’s Mot. for Summ. J.) (Page ID # 3282-87), but also argued that Varsity had not met its obligation “to prove which ‘key elements’ of its designs are original,” id. at 14 (Page ID # 3288). Varsity- responded in its sur-reply to Star’s claim that Varsity’s designs were unoriginal. See R. 177 at 10-11 (Pl.’s Sur-Reply in Supp. of Mot. for Summ. J.) (Page ID # 3371-72).
The district court entered summary judgment in Star’s favor on the copyright claims, concluding that Varsity’s designs were not copyrightable because the graphic elements of Varsity’s designs are not physically or conceptually separable from the utilitarian function of a cheerleading uniform because the “colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular” make the garment they appear on “recognizable as a cheerleading uniform.” R. 199 at 15 (D. Ct. Op. & Order Re Mot. for Summ. J.) (Page ID # 4309). In other words, the district court held that the aesthetic features of a cheer-leading uniform merge with the functional purpose of the uniform. The district court did not address whether Varsity’s designs were unoriginal, and therefore unprotectable. Without addressing the merits of the state-law claims, the district court dismissed them without prejudice on the basis that it had resolved all of Varsity’s federal claims and declined to exercise supplemental jurisdiction. Id. at 17-18
This appeal followed. Varsity challenges the district court’s entry of summary judgment on the issue of copyright infringement and dismissal of the state-law claims. Appellant Br. at 16-18. Because Varsity seeks a' remand to the district court for further proceedings, it asks that we address the district court’s ruling permitting Star’s experts to testify about whether Varsity’s designs are copyrightable, non-useful designs. Id. at 18.
II. COPYRIGHT INFRINGEMENT
We review the district court’s grant of summary judgment de novo. Jones v. Blige,
Varsity has alleged that Star infringed its valid copyrights. To prevail, Varsity must show that (1) it owned a valid copyright in the designs, and (2) that Star “copied protectable elements of the work.” Lexmark Int’l, Inc. v. Static Control Components, Inc.,
(1) originality in the author; (2) copyrightability of the subject matter; (3) a national point of attachment of the work, such as to permit a claim of copyright; (4) compliance with applicable statutory formalities; and (5) (if the plaintiff is not the author) a transfer of rights or other' relationship between the author and the plaintiff so as tó constitute the plaintiff as the valid copyright claimant.
4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01[A] (2003) (footnotes omitted). We have also said, “[t]he second prong tests whether any copying occurred (a factual matter) and whether the portions of the work copied were entitled to copyright protection (a legal matter).” Lexmark,
Varsity challenges the district court’s entry of summary judgment with respect to the copyright claims on three grounds. First, Varsity argues that the district court did not afford appropriate deference to the Copyright Office’s determination of eopyrightability. Second, Varsity contends that the district court used the wrong approach to determine whether a design is a
A. Copyright Registration and the Presumption of Validity
Varsity has successfully registered all five of the designs at issue with the Copyright Office. Congress has bestowed upon those who have obtained copyright registration “made before or within five years after first publication of the work” a presumption of validity “[i]n any judicial proceeding!] ].” 17 U.S.C. § 410(c) (2012). A certificate of registration “constitute^] prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” Id. That presumption is rebuttable; once the plaintiff introduces evidence that he registered the work “before or within five years after first publication,” id., then the burden shifts to the alleged infringer to present evidence that the plaintiffs copyrights are invalid, Hi-Tech Video Prods., Inc. v. Capital Cities/ABC, Inc.,
Three of Varsity’s designs were registered within five years after first publication, Appellant Br. at 21, and therefore Star “shoulders the burden of rebutting the presumptive validity of [those three] copyrights],” Lexmark,
Chevron deference is appropriate not only when “Congress ... ha[s] expressly delegated authority or responsibility to implement a particular provision or fill a particular gap.” ■ United States v. Mead Corp.,
In some circumstances, however, when Congress has not expressly or impliedly delegated to an agency the power to promulgate rules with the power of law, courts need not give Chevron deference to the agency’s interpretation. Id. at 234,
We have, not resolved the level of deference courts must accord certifications of copyright registration, but our sibling circuits have shown some deference to the Copyright Office’s interpretations of the Copyright Act. The Second Circuit gives some deference to the Copyright Office’s Circular for Copyright Registration on Form, SE as an interpretation of whether copyright registration of serial publications serves as registration for the independently authored contributions that were published in the serial issue. See Morris v. Bus. Concepts, Inc.,
We now hold that the Copyright Office’s determination that a design is protectable under the Copyright Act is entitled to Skidmore deference. Individual decisions about the copyrightability of works are not like “rules carrying the force of law,” which command Chevron deference. Mead,
How much to defer to the determination to issue a copyright registration depends on “ ‘the thoroughness evident in [the agency’s] consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking the power to control.’ ” Mead,
Thus, the district court erred by failing to give greater deference to the Copyright Office’s registration determinations. This is not to say that the presumption of validity is irrebuttable. It is not. Hi-Tech,
B. Useful Articles and Separable Designs
As an initial matter, we note that courts are divided about whether copyrightability is a question of law or fact. Oracle Am., Inc. v. Google Inc.,
The Copyright Act of 1976 provides protection for “original works of authorship fixed in any tangible medium of expression....” 17 U.S.C. § 102(a) (2012). Among the “works of authorship” that the Act protects are “pictorial, graphic, and sculptural works.” Id. § 102(a)(5). “ ‘[PJictorial, graphic, and sculptural works’ include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.” Id. § 101. “[T]he design of a useful article ... shall be considered a pictorial, graphic, or sculptural work,” and thus copyrightable, “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Id. “A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Id.
These provisions together require a two-part inquiry to determine whether an article is protectable: first, whether the design for which the author seeks copyright protection is a “design of a useful article,” and if so, second, whether the design of the useful article “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.” Id. This second question is often referred to as testing the “separability” of the pictorial, graphic, or sculptural features of the design of a useful article. See, e.g., Compendium III §§ 924.1-.2 (“When examining a useful article, the [Copyright] Office must determine whether the article contains any pictorial, graphic, or sculptural features that are separable from its utilitarian function.”); Gay Toys, Inc. v. Buddy L. Corp.,
1. Separability
Courts, scholars, and students have endeavored to create a test to determine whether pictorial, graphic or sculptural features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101; see, e.g., 2 William F. Patry, Patry on Copyright § 3:135-147 (2015); Note, Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separablility in American Copyright Law, 69 Ohio St. L. J. 109, 115-143 (2008); Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339 (1990). We have not yet adopted an approach to determining whether the pictorial, graphic, or sculptural features of the design of a useful article are separable from the utilitarian aspects of a useful article, and so we do so now.
There are two ways to determine whether a pictorial, graphic, or sculptural work is separable from the utilitarian aspects of an article — physical separability and conceptual separability.
Few scholars or courts embrace relying on the physical-separability test without considering whether the pictorial, graphic, or sculptural features of an article are conceptually separable because the physical-separability test has limitations. The physical-separability test works well to draw the distinction between aesthetic articles and useful articles when the objects at issue are three-dimensional, such as statuettes that serve as lamp bases. See Mazer v. Stein,
Since Congress passed the Copyright Act of 1976, no court has relied exclusively on the physical-separability test without considering whether the pictorial, graphic, or sculptural features of a design are conceptually separable from the utilitarian aspects of the useful article.
When the Copyright Office “determines that the useful article contains pictorial, graphic, or sculptural features that cannot be physically separated” from the utilitarian aspects of the useful article, then the Copyright Office applies the “conceptual separability test.” Compendium III § 924.2(B). “Conceptual separability means that a feature of the useful article is clearly recognizable as a pictorial, graphic, or sculptural work, notwithstanding the fact that it cannot be physically separated from the article by ordinary means.” Id. For example, the Copyright Office considers the following works of art conceptually separable from useful articles: “[a]n en
Courts have struggled mightily to formulate a test to determine whether “the pictorial, graphic, or sculptural features” incorporated into the design of a useful article “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article” when those features cannot be removed physically from the useful article. Robert P. Merges, Peter S. Menell & Mark A. Lemley, Intellectual Property in the New Technological Age 490 - (6th ed.2012). Through the years, courts and scholars have proposed or used the following approaches to conceptual separability:
(1) The Copyright Office’s Approach: “A pictorial, graphic, or sculptural feature satisfies [the conceptual-separability] requirement only if the artistic feature and the useful article could both exist side by side and be perceived as fully realized, separate works — one an artistic work and the other a useful article.” Compendium III § 924.2(B).
(2) The Primary-Subsidiary Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are “primary” to the “subsidiary utilitarian function.” Kieselstein-Cord,632 F.2d at 993 .
(3) The Objectively Necessary Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the artistic features of the design are not necessary to the performance of the utilitarian function of the article. Carol Barnhart, Inc. v. Economy Cover Corp.,773 F.2d 411 , 419 (2d Cir.1985).
(4) The Ordinary-Observer Approach: A pictorial, graphic, or sculptural feature is conceptually separable if “the design creates in the mind of the ordinary[, reasonable] observer two different concepts that are not inevitably entertained simultaneously.” Id. at 422 (Newman, J., dissenting).
(5) The Design-Process Approach: A pictorial, graphic, or sculptural feature is conceptually separable if the “design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences.” Brandir,834 F.2d at 1145 ; see also Pivot Point,372 F.3d at 930-31 ; Robert C. Denicola, supra, at 741-45.
(6) The Stand-Alone Approach: A pictorial, graphic, or sculptural feature is conceptually separable if “the useful article’s functionality remain[s] intact once the copyrightable material is separated.” Pivot Point,372 F.3d at 934 (Kanne, J., dissenting).
(7) The Likelihood-of-Marketability Approach: A pictorial, graphic, or sculptural feature is conceptually separable if “‘there is substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.’ ” Galiano v. Harrah’s Operating Co.,416 F.3d 411 , 419 (5th Cir.2005) (quoting 1 Nimmer on Copyright § 2.08[B][3]).
(8) Patry’s Approach: There no need to engage in a separability analysis if (A) the work is the design of a three-dimensional article, and (B) the design is not of a “useful article.” 2 Patry on Copyright § 3:145. When determining whether pictorial,*485 graphic, or sculptural features are protectable under the Copyright Act, the focus should be on whether those pictorial, graphic, or sculptural aspects are separable from the “utilitarian aspects ” of the article, not the “article” because “the protected features need not be capable of existing apart from the article, only from its functional aspects.” Id. § 3:146.9 This task requires two additional steps. Id. First, the court “must be able to discern pictorial, graphic, or sculptural features.” Id. Second, the pictorial, graphic, or sculptural features “must be capable of existing as intangible features independent of the utilitarian aspects of the useful article, not independent of the whole article.... ” Id. This necessitates asking “whether the pictorial, graphic, or sculptural features are dictated by the form or function of the utilitarian aspects of the useful article.” Id. If form or function — rather than aesthetics — dictates the way that the pictorial, graphic, or sculptural features appear, then those pictorial, graphic, and sculptural features are not capable of existing independently of the utilitarian aspects of the useful article. Id.
(9) The Subjective-Objective Approach: Conceptual separability is determined by balancing (A) “the degree to which the designer’s subjective process is motivated by aesthetic concerns”; and (B) “the degree to which the design of a useful article is objectively dictated by its utilitarian function.” See Keyes, supra, at 141. “The first factor requires courts to consider the degree to which aesthetic concerns, as opposed to functional ones, motivate the designer.” Id. The second factor considers whether “the design is mostly dictated by function” or “hardly dictated by function at all.” Id. at 142. If the design of the useful article “is mostly dictated by function,” then that fact “weigh[s] against conceptual separability, and therefore, against copyright protection.” Id. If the design “is hardly dictated by function at all” then that fact “weights] in favor of a finding of conceptual separability.” Id.
In recent years, our colleagues on the Second and Fourth Circuits have used multiple of the above-listed approaches in the same case when analyzing whether the “pictorial, graphic, or sculptural features” of a design of a useful article “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.” 17 U.S.C. § 101. In Chosun International, Inc. v. Chrisha Creations, Ltd.,
In Jovani Fashion, Inc. v. Cinderella Divine, Inc.,
Our colleagues on the Second Circuit affirmed, “largely for the reasons stated by the district court.” Jovani Fashion, Inc. v. Fiesta Fashions,
The Fourth Circuit also uses this “hybrid” approach to conceptual separability. In Universal Furniture, the court considered whether decorative elements adorning furniture, a useful article, were eligible for copyright protection.
These cases from the Second and Fourth Circuits illustrate that it is difficult to select one approach to the question whether an artistic design is conceptually separable from the utilitarian aspects of the article. We adopt a similar hybrid approach now.
2. The Sixth Circuit Approach to Identifying Pictorial, Graphic, and Sculptural Works
We believe the best approach to determining whether a design is a copyrightable “pictorial, graphic, or sculptural workQ” 17 U.S.C. § 102, is to ask a series of questions that are grounded in the text of the Copyright Act: (1) Is the design a pictorial, graphic, or sculptural work? (2) If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article — “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”? Id. If the design is not the design of a useful article, then there is no need to inquire into whether there are “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.” 17 U.S.C. § 101.
Before addressing separability, a court should ask: (3) What are the utilitarian aspects of the useful article? For example, the utilitarian aspect of a chair is to provide a place for a person to sit. “Portraying] the appearance of the [useful] article” and “conveying] information” are two utilitarian aspects that courts may not use to determine whether pictorial, graphic, or sculptural features are separable. 17 U.S.C. § 101 (defining “useful article”). We believe that considering these two functions’ “utilitarian aspects” in addition to an article’s other utilitarian functions for the purpose of determining the separability of a graphic design would be at odds with the Copyright Act’s definition of what makes an article a useful article.
Not only is this approach consistent with the text of the Copyright Act, it is consistent with the holdings of our sibling circuits. In Hart v. Dan Chase Taxidermy Supply Co.,
Once we have identified permissible utilitarian aspects, we ask the final two questions that have to do with separability. (4) Can the viewer of the design identify “pictorial, graphic, or sculptural features” “separately from ... the utilitarian aspects of the [useful] article[?]” 17 U.S.C. § 101. If the viewer cannot identify pictorial, graphic, or sculptural features within the design of the useful article, then the design of the useful article is not copyrightable. (5) Can “the pictorial, graphic, or sculptural features” of the design of the useful article “exist[ ] independently of[] the utilitarian aspects of the [useful] article[?]” Id. The objectively necessary approach is useful to answer this final question. If the pictorial, graphic, or sculptural features of the design of the useful article are “not required by [the useful article’s] utilitarian functions” or are “wholly unnecessary to performance of the utilitarian function” of the useful article, then the pictorial, graphic, or sculptural features are not dictated by the function of the useful article, and therefore can exist without the useful article. Carol Barnhart,
We do not endorse looking at why the designer chose the ultimate design as the final expression of the result she was trying to achieve to the exclusion of other evidence. Nor do we adopt the likelihood-of-marketability test because it privileges a judge’s personal taste
With this background in mind, we now turn to address whether Varsity’s designs “incorporate[ ] pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.” 17 U.S.C. § 101.
C. Varsity’s Designs
Question One: We begin our analysis by first identifying whether Varsity’s designs are “pictorial, graphic, or sculptural works.” 17 U.S.C. § 101. Varsity’s designs, for which they received copyright registration, are “two-dimensional works of ... graphic ... art.” Id.; see also, e.g., R. 1-15 at 2 (Compl. Ex. 15) (Page ID #48) (Varsity’s certificate of registration for design 078 for “2-Dimensional artwork”); R. 1-16 at 2 (Compl. Ex. 16) (Page ID # 51) (design 0815 registered for “2-Dimensional artwork”).
Question Two: Are Varsity’s designs “design[s] of ... useful article[s?]” 17 U.S.C. § 101. Varsity’s designs are sketches that depict cheerleading crop tops and skirts — the components of a cheerleading uniform. See R. 1-15 at 2 (Compl. Ex. 15) (Page ID # 48); R. 1-16 at 2-3 (Compl. Ex. 16) (Page ID # 51-52); R. 1-17 at 2 (Compl. Ex. 17) (Page ID # 54); R. 1-18 at 2 (Compl. Ex. 18) (Page ID # 57); R. 51-1 at 2 (1st Am. Compl. Ex. 9) (Page ID # 536). In other words, they are designs of cheerleading uniforms and sportswear, which have an “intrinsic utilitarian function that is not merely to
Question Three: What are the “utilitarian aspects” of cheerleading uniforms? Cheerleading uniforms have “an intrinsic utilitarian function,” namely to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” Appellant Br. at 57. Star contends that cheer-leading uniforms identify the wearer as a cheerleader and a member of a cheerleading team. See Appellee Br. at 32, 39, 51-52. But this is no different than saying that a utilitarian aspect of a cheerleading uniform is to convey to others the fact that the wearer of the uniform is a cheerleader for a particular team. See 17 U.S.C. § 101 (“A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to ... convey information.”). And therefore Star’s purported utilitarian aspect of a cheerleading uniform is an impermissible factor. See supra Section II.B.2.
It also appears that Star makes one final argument as to why Varsity’s graphic designs cannot “be identified separately from, and are [in]capable of existing independently of, the utilitarian aspects of the article”: the designs’ “decorative function” is one of the “utilitarian aspects” of a cheerleader uniform. See Appellee Br. at 51-52 (citing Jovani
To the extent that Star contends that pictorial, graphic, or sculptural features are inextricably intertwined with the utilitarian aspects of a cheerleading uniform because they serve a decorative function, see Appellee Br. at 51-52, we reject that argument. Such a holding would render nearly all artwork unprotectable. Under this theory of functionality, Mondrian’s painting would be unprotectable because the painting decorates the room in which it hangs. But paintings are copyrightable. Gay Toys,
Question Four: Can we identify pictorial, graphic, or sculptural features separately from the parts of the cheerleading-uniform design, which cover the body, permit free movement, and wick moisture? We can identify graphic features of Varsity’s designs — the arrangement of stripes, chevrons, zigzags, and color-blocking. The district court concluded that these graphic features are not separately identifiable from a cheerleading uniform because a cheerleading uniform “without team colors stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular, is not recognizable as a cheerleading uniform.” R. 199 at 15 (D. Ct. Op. & Order) (Page ID # 4309). We disagree. First, Varsity’s graphic designs do not “enhance the [cheerleading uniform’s] functionality qua clothing.” Chosun,
Question Five: Can the arrangement of stripes, chevrons, color blocks, and zigzags “exist[] independently of’ the utilitarian aspects of a cheerleading uniform? We believe they can. Varsity’s designers sketch their designs and select, place, and arrange various graphic elements, “such as stripes, lines, chevrons, inverted chevrons, angles, curves, coloring, and shapes.” R. 173-2 at 3 (Williams Decl. ¶4) (Page ID # 2438). Varsity’s production department either applies these graphic designs onto cheerleading uniforms or recreates the designs by sewing panels of fabric together. R. 173-1 at 3 (Spencer Decl. ¶ 5) (Page ID # 2411). Varsity’s designs “may be incorporated onto the surface of a number of different types of garments, including cheerleading uniforms, practice wear, t-shirts, warm-ups, and jackets, among other things.” R. 173-2 at 2 (Williams Decl. ¶ 3) (Page ID #2437). This evidence establishes that the designs are transferrable to articles other than the traditional cheer-leading uniform (crop top and skirt). See R. 173-1 at 21-27 (Spencer Decl. Ex. D) (Page ID # 2429-35) (photos showing Varsity’s designs sublimated onto fabric and showing uniforms with sublimated designs). In addition, the interchangeability of Varsity’s various designs is evidence that the graphic design on the surface of the uniform does not affect whether the
Because we conclude that the graphic features of Varsity’s designs “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of [cheerleading uniforms],” we hold that Varsity’s graphic designs are copyrightable subject matter. 17 U.S.C. § 101. This conclusion is faithful to the statutory text of the Copyright Act and consistent with other courts’ treatment of the protectability of clothing and the pictorial and graphic features that appear on clothing under the Copyright Act. Courts have drawn a line between “fabric design” and “dress design.” “Fabric designs” are “design[s] imprinted on a fabric, such as a rose petal, which in a completed dress may appear repeatedly throughout the dress fabric, or may appear but once on a given dress.” 1 Nimmer on Copyright § 2.08[H][1]. Take the work of Piet Mondrian, for example. Mondrian’s artwork or design is separable as a work of art because not only is it possible to recreate the design on t-shirts, grocery bags, cellphone cases, or notebooks, but also it actually has been done: Yves St. Laurent used Mondrian’s famous color-blocking and thick, black stripes to create cocktail dresses known as the “Mondrian look.” See N. Coast Indus. v. Jason Maxwell, Inc.,
In contrast, it is impossible either physically or conceptually to separate a “dress design,” which “graphically sets forth the shape, style, cut, and dimensions for converting fabric into a finished dress or other clothing garment,” from the utilitarian aspects of clothing, i.e., to cover, protect, and warm the body. 1 Nimmer on Copyright § 2.08[H][1]. The shapes of the neckline (v-neck, square-neck, crew-neck), sleeves (short, long, puffy), skirt shape (a-line, pencil, midi, maxi), trouser cut (pleated, plain-front, cuffed), or pockets (patch, welt, jetted) — these are the components of a design that are inextricably connected with the utilitarian aspects of clothing: pockets store pencils or pens; pants and skirts cover the legs; shirts cover the torso modestly or less modestly depending on the neckline. The designs of these components of an article of clothing “can[not] be identified separately from, [or be] capable of existing independently of, the utilitarian aspects of the article [of clothing].” 17 U.S.C. § 101.
The Copyright Act protects fabric designs, but not dress designs. Knitwaves, Inc. v. Lollytogs Ltd.,
Because we believe that the graphic features of Varsity’s cheerleadinguniform designs are more like fabric design than dress design, we hold that they are protectable subject matter under the Copyright Act. We therefore enter summary judgment for Varsity solely on the issue of the protectability of Varsity’s designs as pictorial, graphic, or sculptural works. Because we conclude that Varsity is entitled to judgment on the issue of whether its designs are “pictorial, graphic, or sculptural works” and not uncopyrightble “useful articles,” there is no need to address whether expert testimony would be proper in this case to determine the copyrightability of a design, as Varsity requests. We express no opinion about whether Varsity’s designs are ineligible for copyright protection because they lack originality or any other reason. The district court did not address Star’s contention that Varsity’s designs are unoriginal, see R. 176-2 at 13-14 (Def.’s Combined Mem. of Law in Opp’n to Pis.’ Mot. for Summ. J. and Reply in Supp. of Its Mot. for Summ. J.) (Page ID #3287-88), and therefore we leave that issue for the district court to address in the first instance.
III. DISMISSAL OF THE STATE-LAW CLAIMS
The district court dismissed all of Varsity’s state-law claims after finding a federal question lacking. R. 199 at 17 (D. Ct. Op. & Order) (Page ID #4311). District courts may decline to exercise supplemental jurisdiction over state-law claims if “the district court has dismissed all claims over which it has original jurisdiction.” 28 U.S.C. § 1367(c) (2012). Section 1367(c) does not obligate district courts to dismiss state-law claims after dismissal of all federal claims, nor does it require that they retain jurisdiction either except in a few circumstances. Musson Theatrical, Inc. v. Fed. Express Corp.,
We now vacate the district court’s judgment dismissing Varsity’s state-law claims for two reasons. First, because we hold that Varsity’s designs are copyrightable graphic works, a federal claim remains. Second, Varsity should have the opportunity to amend its complaint to satisfy the requirements of diversity jurisdiction.
Star denies that Varsity sufficiently pleaded diversity jurisdiction because the complaint does not allege an amount in controversy or that the parties are diverse. Appellee Br. at 70. The party invoking federal jurisdiction — in this case, Varsity— bears the burden of proof that the federal courts have jurisdiction. Cleveland Hous. Renewal Project v. Deutsche Bank Trust Co.,
We assess the citizenship of limited liability corporations (“LLC”) differently, however: an LLC “has the citizenship of each of its members.” Delay v. Rosenthal Collins Grp., LLC,
IV. CONCLUSION
Because the district court erroneously concluded that Varsity’s designs were not copyrightable, we VACATE the judgment in favor of Star and enter partial judgment for Varsity on the sole issue of whether Varsity’s designs are copyrightable pictorial, graphic, or sculptural works. We also VACATE the order dismissing Varsity’s state-law claims. We REMAND the case to the district court for further proceedings consistent with this opinion.
Notes
. Sublimation is the process of printing the design directly onto fabric. The printer heats the ink and infuses it into the fabric while the ink is gaseous. Once the design is printed onto the fabric, the production team cuts the fabric in the shape of the design and sews the pieces together. R. 173-1 at 4 (Spencer Deck ¶ 8) (Page' ID #2412) (“After the paper and fabric are finished feeding through the machine, the large pieces of fabric have the designs on them which are then cut out and the outer edges are sewn together as a front and back of a garment.”); see also R. 173 at 9 (PSUF ¶ 31) (Page ID # 2392).
. Varsity’s original complaint alleged that Star infringed Varsity Design 034. See R. 1 at 4 (Compl. ¶ 14(e)). Varsity sought leave to amend the complaint in order to allege that Star had infringed Design 074, not Design 034, R. 48 at 1 (Unopposed Mot. to Amend Compl. ¶ 1) (Page ID #518), which the district court granted, R. 49 at 1 (Order Granting Unopposed Mot. to Amend Compl.) (Page ID #531). Varsity attached a copy of Design 074 and the certificate of registration for Design 074 to its First Amended Complaint. R. 51-1 at 2 (Amend. Ex. 9) (Page ID # 536); R. 51-2 at 2-3 (Amend. Ex. 19) (Page ID # 538-39).
. Varsity also alleged violations of the Lanham Act, 15 U.S.C. § 1125(a) (2012). The district court entered summary judgment for Star with respect to the Lanham Act claim upon Star's motion, which Varsity did not oppose. R. 199 at 17 (D. Ct. Op. & Order Re Mot. for Summ. J.) (Page ID # 4311); 172 at 2 (Pis.' Mot. for Summ. J.) (Page ID # 2300-01). Nor does Varsity appeal the entry of judgment on that claim.
. That the Eleventh Circuit did not label the degree of deference owed to the Copyright Office "Skidmore ” or "Chevron deference” is unsurprising; Norris preceded Chevron by a year. See Chevron,
. The Court noted that tariff-classification letters do not quality for Chevron deference in part because "Customs has regarded a classification as conclusive only as between itself and the importer to whom it was issued....” Mead,
. We recognize that the words "conceptual'' and "physical” separability do not appear in
A two-dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like. The same is true when a statute or carving is used to embellish an industrial product or, as in the Mazer case, is incorporated into a product without losing its ability to exist independently as a work of art. On the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee’s intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies’ [sic] dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. The test of separability and independence from "the utilitarian aspects of the article” does not depend upon the nature of the design — that is, even if the appearance of an article is determined by [a]esthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable. And, even if the three-dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver flatware), copyright protection would extend only to that element, and would not cover the overall configuration of the utilitarian article as such.
Id. In light of this background, the Second Circuit has declared that " '[conceptual separability' is ... alive and well.” Brandir Int’l, Inc. v. Cascade Pac. Lumber Co.,
. Of course, there are a few examples where a two-dimensional design is physically separable from a useful article. Recently, the Eleventh Circuit held that décor paper design for laminate wood flooring was "physically sever-able” because the plaintiff “sells otherwise identical flooring that uses décor paper other than the Glazed Maple design,” and thus "[t]he interchangeability of the paper designs” was evidence that the décor paper was physically separable from the useful flooring. Home Legend, LLC v. Mannington Mills, Inc.,
. In 1978, the D.C. Circuit "rejected the idea of conceptual separability.” Pivot Point Int’l, Inc. v. Charlene Prods., Inc.,
. Patry recommends abolishing the distinction between “physical” and “conceptual” separability entirely. 2 Patry on Copyright § 3:146. We decline to abandon those terms because Congress specifically referenced physical and conceptual separability in the House Report discussing the Copyright Act of 1976. See H.R. Rep. No. 1476.
. Hart distinguished the Barnhart court’s conclusion that "styrene human torsos used to display blouses and sweaters were not copyrightable" because they were "useful articles,” id. One key distinction was that, in Barnhart, "the parties had stipulated that the torsos were ‘useful articles’ that were designed 'to display clothes.’ ” Id. (citing Barahart,
. Justice Holmes cautioned judges against injecting their personal taste into copyright law:
It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke. It may be more than doubted, for instance, whether the etchings of Goya or the paintings of Manet would have been sure of protection when seen for the first time. At the other end, copyright would be denied to pictures which appealed to a public less educated than the judge.
Bleistein v. Donaldson Lithographing Co.,
. Mazer v. Stein involved an interpretation of the Copyright Act of 1909. When Congress amended the Copyright Act in 1976 "addfing] language to the definition of ‘pictorial, graphic, and sculptural works’ in an effort to make clearer the distinction between works of applied art protectable under the bill, and industrial designs not subject to copyright protection,” it expressly relied upon Mazer to draft the amendment. H.R. Rep. No. 94-1476, at 54-55.
. The Fifth Circuit used the likelihood-of-marketability approach to hold that these uniform designs were not eligible for copyright protection. See Galiano,
Dissenting Opinion
dissenting.
The majority presents a thoughtful approach to this difficult “metaphysical quandary” that courts have wrestled with for years. See Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc.,
Function. The majority explains that the function of a cheerleading uniform is to wick away moisture and “permit the wearer to cheer, jump, kick, and flip.” That broad definition could be used to describe all athletic gear. But the particular athletic uniforms before us serve to identify the wearer as a cheerleader. Without stripes, braids, and chevrons, we are left with a blank white pleated skirt and crop top. As the district court recognized, the reasonable observer would not associate this blank outfit with cheerleading. This may be appropriate attire for a match at the All England Lawn Tennis Club, but not for a member of a cheerleading squad.
A narrower approach to “function” finds support in other circuits’ caselaw. In Jovani Fashion, Ltd. v. Fiesta Fashions,
The majority rejects this categorization because this holding would purportedly “render nearly all artwork unprotectable.” That’s not true. It renders unprotectable only artwork that is integral to an item’s utilitarian function. In defining that function, we are confined by caselaw and by common sense. Take a dresser, for example. The function of a dresser is to store clothes and other articles. Any ornamental designs displayed on the surface of a dresser are not integral to that function. Cf. Universal Furniture,
Separability. Once function is properly defined, it logically follows: the placement of the stripes, braids, and chevrons is not separable from that function. In Jovani Fashion, in relation to a prom dress, the court excluded from copyright “the arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching on the dress waist; and layers of tulle on the skirt.”
These designs are unlike other items that are copyrightable. Take the belt buckles in Kieselsteinr-Cord v. Accessories by Pearl, Inc.,
The majority notes that the Copyright Office’s registration for Varsity’s two-dimensional sketches is entitled to Skidmore deference. See Hi-Tech Video Prods., Inc. v. Capital Cities/ABC, Inc.,
The fact that Varsity’s artistic choices may have been “ ‘aesthetically satisfying and valuable’” likewise does not change this conclusion. See Carol Barnhart Inc. v. Economy Cover Corp.,
Ultimately, this case turns on how function is defined. How broadly should courts define the function of an article of clothing? Should they define it at its most basic function, to cover the body? Should they define it broadly, as the majority does in this case, as wicking away moisture and “permitting] the wearer to cheer, jump, kick, and flip”? Or should they define it more particularly, in relation to its specific purpose — as identifying the wearer as a cheerleader? See Jovani Fashion,
It is apparent that either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design. The law in this area is a mess — and
I respectfully dissent.