Apparel Designs And The 'Metaphysics' Of Copyright Protection

Varsity Brands, Inc. v. Star Athlectica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014)

Metaphysics is usually thought to be the province of philosophers or theologians. A recent decision by a U.S. District Court in Tennessee, Varsity Brands, Inc. v. Star Athletica, LLC, 110 U.S.P.Q.2d 1150 (W.D. Tenn. 2014), reminds us that copyright law can also require courts to confront some pretty thorny metaphysical issues in distinguishing between copyrightable expression and non-copyrightable utilitarian designs. As Professor Paul Goldstein has written, "[o]f the many fine lines that run through the Copyright Act, none is more troublesome than the line between protectable pictorial, graphic and sculptural works and unprotectible utilitarian elements of industrial design."

Section 101 of the Copyright Act frames the distinction between copyrightable and utilitarian works. The Copyright Act defines "pictorial, graphic, and sculptural works" to include "two-dimension and three-dimensional works" but makes clear that copyright protection does not extend to "their mechanical or utilitarian aspects," and further states:

"the design of a useful article . . . shall be considered [protected by copyright] 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."

The Copyright Act defines "useful article" as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information."

It is well-recognized that clothing possesses both utilitarian and aesthetic attributes: it serves the utilitarian function of shielding our bodies from the elements as well as contains original coloration and designs that responds to our purely aesthetic desires and sensibilities. Hence, those elements of clothing design pertaining to shape, size, style, cut, and dimensions for converting fabric into a finished garment are not protected by copyright. By contrast, designs imprinted on fabric can be subject to copyright protection. Distinguishing between copyrightable aesthetic elements and utilitarian design elements has proved to be a difficult, controversial, and as it turns out, highly "metaphysical" task.

The "metaphysical" aspect derives from the two-fold "separateness" test that courts typically performed to determine whether a claimed...