Sup. Ct. Doesn’t Ask About Test For Conceptual Separability in Star Athletica
Court failure to ask about conceptual separability test
Eventual ruling may be narrow, applicable only to questions in this case
BY: ANANDASHANKAR MAZUMDAR
The U.S. Supreme Court didn’t focus during oral argument in a copyright case Oct. 31 on the biggest question that practitioners hope they will tackle—a standard for determining if designs on clothes can be protected (Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., No. 15-866, argued 10/31/16).
Issues brought up before the court do not necessarily indicate how the court will rule. However, copyright lawyers told Bloomberg BNA that it was notable the justices didn’t bring up the issue of how to determine conceptual separability.
The copyright community had expected that, when the court decided to take up the case, they were interested in clearing up a murky area of the law. Federal appeals courts have applied several different tests to determine whether something applied to clothing is protected, a concept known as conceptual separability. But that didn’t seem to be their concern during oral argument.
‘‘I really think we’re in for a narrow ruling again,’’ Lisa W. Rosaya, a copyright lawyer with Baker & McKenzie LLP, New York, told Bloomberg BNA.
Why Did Supreme Court Grant Review? ‘‘I’m still a little bit puzzled about why they took the case,’’ David Leichtman of Robins Kaplan LLP, New York, told Bloomberg BNA. ‘‘Ostensibly, it was to deal with the circuit split, but then they didn’t ask any questions at all’’ on that subject.
The focus of dialogue between the bench and the parties’ counsel seemed, instead, to focus on whether the designs in question were utilitarian or not.
Erica D. Klein of Kramer Levin Naftalis & Frankel LLP, New York, held out hope that the court’s line of questioning could still lead to resolving this area of copyright law.
‘‘The Justices bypassed any questions regarding the appropriate test to apply, and instead struck at the substance of what copyright law does or can protect,’’ Klein said in an e-mail message. ‘‘If their decision follows the focus of their questions, we might get the clarity that the proliferation of divergent tests has been unable to provide.’’
Much of the court’s time was taken up with a handful of analogies. They wondered whether the designs in this case were comparable, say, to an image printed on a T-shirt that looks like the front of a tuxedo jacket worn with a bow tie and a frilled shirt.
Tuxedo T-Shirt Frequently Analogized. That kind of design was clearly a conceptually separable work of expression applied to a useful article—a T-shirt—that could be protected by copyright law.
The government’s brief likened the uniform designs in this case to just such a T-shirt. Justice Elena Kagan asked how the analogy affected the analysis.
John J. Bursch, arguing for the petitioner, Star Athletica LLC, who opposes copyright protection for Varsity Brands Inc.’s uniform designs, said there could be a copyright interest in the tuxedo-front image on the T-shirt. The copyright owner could prevent anyone from copying that image, but not from making an actual tuxedo.
Similarly, Varsity, with a copyright interest in the uniforms’ stripes and zigzags, could prevent others from putting that pattern on notebook covers or lunch boxes. However, because the uniform designs were utilitarian, Varsity can’t stop anyone else from making cheerleading uniforms with that design.
Could Camouflage Pattern Be Protected? The court kept returning to the tuxedo T-shirt comparison and to one about camouflage patterns.
Bursch said someone could come up with a fabric design that functions as ‘‘the best desert camouflage that’s ever been designed in the history of the world.’’ Its creator could claim a copyright interest in the design, but could not stop the military from using it for the utilitarian purpose of camouflaging soldiers in battle, he said.
In this case, according to Star Athletica, the design had two utilitarian purposes, including conveying the message that the uniform’s wearer was a cheerleader.
Leichtman objected to these characterizations, citing to his experience as both a copyright owner and a parent to competitive cheerleaders.
He said that the discussion seemed centered on ‘‘an antiquated idea of what a cheerleading uniform looks like.’’
‘‘The uniforms that the cheerleaders wear—both male and female—come in a lot of variety,’’ he said. ‘‘There’s no reason why these patterns have to be copied in order for there to be competition in the market for cheerleading clothes.’’
The design’s other utilitarian purpose was to make the wearer more attractive, Bursch said. ‘‘It creates the optical illusion that they are taller, that they’re slimmer, that they’re curvier.’’
Lawrence R. Robins of Sullivan & Worcester LLP, Boston, said he feared that, if the court were to accept the arguments about functionality, it might jeopardize existing, solid copyright protections for patterns on fabrics.
‘‘Should the court accept the visual effects argument, they would invite such an inquiry in future fabric design cases and, perhaps, weaken the protection such designs enjoy under the current state of the law,’’ he said in an e-mail message.
School Locked Into Uniform Supplier? Justice Sonia M. Sotomayor took the conversation in another unexpected direction when she asked whether granting copyright protection to a cheerleading uniform design could lock a university into a nearly century-long uniform supplier contract.
‘‘Does the university that contracts with you know that they have to buy their uniform from you for 99 years plus whatever?’’ she asked William M. Jay, counsel for copyright holder Varsity.
Jay rejected that suggestion: ‘‘There are many, many, many variants available.’’
Rosaya agreed with this point.
‘‘Really, the colors are the only thing that are unique to the school,’’ she told Bloomberg BNA. ‘‘It wouldn’t prevent them from using colors and a different design.’’
Sotomayor then accused Varsity Brands of trying to leverage copyright protection in order to diminish competition.
‘‘You’re killing knock-offs with copyright,’’ she said. ‘‘You haven’t been able to do it with trademark law; you haven’t been able to do it with patent designs. We are now going to use copyright law to kill the knock-off industry.’’
Elizabeth G. Kurpis of Mintz Levin Cohn Ferris Glovsky & Popeo P.C., New York, said the comment was significant.
‘‘This could have a deep impact on particular sections of the fashion industry, such as fast fashion, which built their business model on essentially this,’’ Kurpis said in an e-mail message. ‘‘That is, taking designs from luxury ready-to-wear runways that generally do not enjoy protections of copyright law as it stands now and producing strikingly similar designs with lightning speed which are then marketed for a fraction of the original’s price.’’
John J. Bursch of Bursch Law PLLC, Caledonia, Mich., argued for Star Athletica. William M. Jay of Goodwin Procter LLP, Washington, argued for Varsity Brands. Eric J. Feigin of the Office of the Solicitor General argued for the government.
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