High Court Shakes Its Pom-Poms for Uniform Makers

WASHINGTON (CN) – Adding a new kind of chevron to its precedent, the Supreme Court ruled Wednesday that zig-zags and other cheerleading-uniform designs enjoy protection under copyright law.

The showdown erupted after Varsity Spirit Corp. accused competing uniform maker Star Athletica of infringing on its designs.

A federal judge in Memphis, Tennessee, sided with Star at summary judgment, but the Sixth Circuit in Cincinnati reversed, saying the lower court’s “holding would render nearly all artwork unprotectable.”

“Under this theory of functionality,” U.S. Circuit Judge Karen Nelson Moore had said for the majority, “Mondrian’s painting would be unprotectable because the painting decorates the room in which it hangs. But paintings are copyrightable.”

Though the Supreme Court affirmed 6-2 on Wednesday without the aid of any modern Dutch masters, Justice Stephen Breyer invoked another famous Netherlander to explain why he would reverse.

“Van Gogh’s painting of a pair of old shoes, though beautifully executed and copyrightable as a painting, would not qualify for a shoe design copyright,” Breyer wrote in dissent, joined by Justice Anthony Kennedy.

In this case, Breyer found, cheerleading uniforms qualify as useful articles, and Varsity’s designs are incapable of existing independently them.

Citing the examples of  spoons shaped like arrows and candleholders shaped like sailboats, Breyer said that granting such objects copyright protection  would prevent others from selling spoons and candleholders.

“The designs cannot be physically separated because they themselves make up the shape of the spoon, candleholders, or wheel covers of which they are a part,” Breyer wrote.’

Justice Clarence Thomas wrote the lead opinion for the court, which was joined in full by Chief Justice John Roberts and by Justices Samuel Alito, Sonia Sotomayor and Elena Kagan.

“A fresco painted on a wall, ceiling panel, or dome would not lose copyright protection, for example, simply because it was designed to track the dimensions of the surface on which it was painted,” Thomas wrote. “Or consider, for example, a design etched or painted on the surface of a guitar. If that entire design is imaginatively removed from the guitar’s surface and placed on an album cover, it would still resemble the shape of a guitar. But the image on the cover does not ‘replicate’ the guitar as a useful article.”

Thomas looked to the uniform on which the design appears as part of a copyright-eligibility test that considers whether they “would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.”

Varsity demonstrated, according to the ruling, that “imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.”

Thus uniform designs enjoy copyright protection in the same way that the law protects a design drawn on the album cover and then applied to the guitar’s surface, or vice versa, the court found.

“Failing to protect that art would create an anomaly: It would extend protection to two-dimensional designs that cover a part of a useful article but would not protect the same design if it covered the entire article,” Thomas wrote. “The statute does not support that distinction, nor can it be reconciled with the dissent’s recognition that ‘artwork printed on a T-shirt’ could be protected.”

Justice Ruth Bader Ginsburg concurred only in judgment, explaining in a separate opinion that the separability test “is unwarranted because the designs at issue are not designs of useful articles.”

Ginsburg said she would affirm on the basis that “the designs are themselves copyrightable pictorial or graphic works reproduced on useful articles.”

In addition to its mention of Van Gogh, the dissent includes an example about a lamp designed to include a porcelain Siamese cat — either attached to the lamp’s marble base with a long rod, or sitting in the middle of the base, with wires running up through its body to the bulbs. Pictures of the lamps are included with the ruling.

Breyer’s last appendix to the dissent is an image from Marcel Duchamp’s “readymades” series, the functional mass-produced objects he designated as art.

%d bloggers like this: