Not So Cheerful About Varsity Brands (Crosspost)


(Written for master trademark attorney Ron Coleman’s Likelihood Of Confusion® blog, crossposted with his gracious consent.)

So last Wednesday (March 22, 2017, if you’re joining us late) the Supreme Court of the United States issued its decision in Star Athletica, LLC v. Varsity Brands, Inc, et al

And a very small, highly specialized subset of LawTwitter went nuts.

Ron Coleman collected some great examples on his post Rah Rah Raw. (Trademark attorneys: Clever names on demand.) On the one hand, we have experienced copyright/fashion lawyers saying things like this:

On the other hand, we have intellectual property law professors saying things like this:

If it’s not clear, that was a response to the prior tweet. Or even things like this:

…when they really ought to know better. 140 character limit or not, that seems a bit over the top. But is it? Let’s review the decision.

First, a very brief summary of patent law vs. copyright law. Patents protect useful inventions. Copyrights protect artistic creations. In a sense, patents “trump” copyrights, in that you cannot use a copyright to protect a useful invention. (For instance, you cannot copyright the shape of an improved airplane propeller and claim nobody else can make a similar propeller. That’s what patents are for.) Patents are harder to get than copyrights, have much shorter terms, and cost a lot more both to obtain and to enforce. On the other hand, you can usually make a lot more money in a patent infringement suit than in a copyright infringement suit, there are fewer defenses to patent infringement than copyright infringement, and defenses to patent infringement are harder to raise.

Just to make things conf… I mean, interesting there are also what are known as design patents. These protect the “ornamental design of useful articles.” They are sort of a bizarre hybrid of patents and copyrights that have some of the worst (and best) features of both. They are outside the scope of the decision, but keep in mind that they exist when discussing this area of the law, if for no other reason than that “design” does not mean quite the same thing to a (design) patent lawyer that it does to a copyright lawyer, and I think that causes some of the confusion we are seeing.

Speaking of designs, in this context, designs are the key. Both parties in the Varsity Brands case make cheerleader uniforms, including non-team-specific uniforms with a variety of geometric designs on them. Here are examples:


Those are uniforms for which Varsity Brands, Inc. (the original plaintiff, which is why I call the case Varsity Brands, hereafter “Varsity”) had registered copyrights. Star Athletica, LLC (hereafter, “Star”) made some competing uniforms which allegedly infringed said copyrights, and Varsity sued Star for copyright infringement.

Please allow me first and foremost to direct your attention to Footnote 1 on Page 11 of the main opinion:

1We do not today hold that the surface decorations are copyrightable. We express no opinion on whether these works are sufficiently original to qualify for copyright protection, see Feist Publications, Inc. v. Rural Telephone Service Co., 499 U. S. 340, 358–359 (1991), or on whether any other prerequisite of a valid copyright has been satisfied.

Failure to read/understand/accept the text of that footnote is, in my opinion, behind most of the more sensational tweets/comments such as Professor Fromer’s supra. The assertion that you can now slap a copyrighted design on any old thing and claim the thing itself enjoys the protection of copyright meets its first and highest hurdle in the fact that the design must in and of itself be copyrightable. The opinion is not addressing the question of copyrightability of the underlying design. (I myself, though not familiar with the particulars of the registrations, find them somewhat dubious in that regard.) It is assuming arguendo that the design is copyrighted, and resolving an old and complex circuit split on the legal ramifications of attaching a copyrighted design to a useful article.

And yes, there was a complex split. I have seen people claiming as many as six different tests existed for determining when useful article limitation overcame copyright protection. Many of them considered, to some degree, how functional the article was as an independent factor. And this is not a new idea. It is an old principle, recently re-affirmed in TrafFix Devices, Inc. v. Marketing_Displays, Inc. that you cannot use trade dress to create “perpetual patents.” Similarly, in Kohler Co. v. Moen, Incorporated the same rule was applied to trademarks. All of the tests attempting to do the same with copyright were created by intelligent judges and it is not my intent to dismiss or belittle them.

But I think that Occam’s Razor (the original, not the newfangled version) is very relevant here: “Do not multiply entities beyond necessity.” The intent of copyrights is to protect artistic works (henceforth I will not call them “designs.”) Using functionality as an independent test, in the case of artistic works applied to useful articles, is adding an unnecessary entity. And asking questions about intent versus perception or relative economic factors, as some of the tests did, is definitely adding unnecessary entities.

As a simple example, Justice Breyer’s dissent wants to apply a somewhat different approach:

Can we extract those features as copyrightable design works standing alone, without bringing along, via picture or design, the dresses of which they constitute a part? (Dissent, page 10.)

However, as the main opinion points out, not only does this lead to implausible results (You can’t copyright a square canvas: does this mean any painting made on one can’t be copyrighted?) but it imposes a requirement not found in the Copyright Act. As the first paragraph of the syllabus says:

The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” eligible for copyright protection as artistic works if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U. S. C. §101.

There are two “entities,” if you will:

  1. Can you identify the artistic work separately?
  2. Can it exist independently of the useful article?

In Varsity Brands, the answer to both questions is clearly yes. The artistic work is the pattern of lines and figures. We could, with a really sharp knife, take the top layer of fabric off and create an independent work without destroying or limiting the usefulness of the underlying article in any way. How artistic it would be is a separate question, but if this:

…is a prized exhibit of one of the world’s great art galleries, who are we to say that Varsity’s works are unworthy of a little protection?

In any event, Justice Breyer’s proposed test, just like all the other tests, includes new entities which are neither necessary nor present in the statute. The test set forth in the opinion puts the burden exactly where the statute set it all along, and just as importantly, where the underlying principle of copyright protection would reasonably set it: on the independent existence and originality of the artistic work. Once they are established the “canvas” upon which artistic work rests, be it an actual canvas, a t-shirt, or a cheerleading uniform, matters not.

So what does all this mean to practitioners on the ground?

Going forward, this test will put a lot more emphasis back on the fundamentals of copyrightability and the doctrines governing it. Copyrightability is a mixed question of fact and law, heavily fact-dependent. Principles of copyrightability determination such as scènes à faire, the merger doctrine, and even the basic requirement of minimal artistic creativity set forth in Feist are untouched by the decision. These principles will form the basis for defense of copyright infringement allegations involving useful articles, rather than elaborate and circuit-dependent tests regarding how the functionality affects the copyright protection afforded the copyright owner.

Likewise, when the useful article itself is ornamental, preemption by the principles of design patent law will still come into play. If the ornamental design and the useful object are irretrievably combined, only design patent protection will be available. And that distinction will still be available as a defense to any claim of copyright infringement in the article as a whole.

For an example of how that could apply to fashion, consider the work of Tomoko Nakamichi:

In the case of clothing such as that made by Ms. Nakamichi, the artistic work is usually not going to be any individual decoration, but rather the article of clothing as a whole. If you remove the “artistic” parts, there is almost nothing useful left. Part of that is the non-two-dimensional nature of the artistic work. You will note that the Varsity Brands opinion talks a lot about applying two and three-dimensional artworks to useful articles. But here the subcomponents are mechanically integrated into the article itself, and removing them would cause the article to be less useful. Distinctions like this will become more important with the alternative tests that existed before Varsity Brands no longer available.

Relatedly, copyright law has an extensive body of doctrine as to how much of a copyrighted artwork must be copied to create an infringement and how much modification an alleged infringer must perform before the alleged infringing work is no longer a copy or an infringing derivative work. Those principles still apply, full force, to any allegation of copyright infringement related to a useful article under Varsity Brands. Along with standard copyrightability defenses and patent/design patent preemption, these provide accused infringers substantial protection from the tsunami of liability some commenters are predicting in the wake of Varsity Brands.

I hope you found this post educational. Even more importantly, to the extent you may have been worried about a sudden surge in potential liability on behalf of creators I hope it has reassured you somewhat. If readers have any questions or comments, I would be delighted to hear them. Thanks for reading!

A Tangent-Free Checklist For Electronically Copyrighting Ebooks.

NOTE: I am an attorney, but nothing in this article should be read as specific legal advice. While the information in this article is accurate to the best of the author’s knowledge and belief at the time of publication, laws and regulations change frequently and individual circumstances vary. Please consult an attorney licensed in your jurisdiction and familiar with the relevant law before making legal decisions.

There are many articles and books on how to file copyright registrations. However, most of them seem to go into a lot of unnecessary depth and/or off on extended explanatory or historical tangents. Which is understandable: Copyright law is pretty complicated, and it’s also very interesting to the sort of person who writes such books and articles. I am the king of unnecessary depth and going off on tangents, and I am casting no aspersions.

But, I thought it might be nice to have a really simple, streamlined checklist for copyrighting an e-book comprising original authorship. So here it is. If you follow these steps, you should be able to easily file a copyright registration for a single work of written fiction or nonfiction written solely by you.

Do not use this list for ANYTHING other than a single work of written fiction or nonfiction written solely by you! (Scripts, by the way, are not works of written fiction or nonfiction for purposes of the copyright law – they are “dramatic works.” If you’re registering a script, this list is not appropriate.) Also, if the work has previously been published in print or in some other work, you should not use this list.

All caveats herein notwithstanding, the Copyright Office’s website is reasonably easy to use, and a person of reasonable intelligence can most likely figure out how to register most kinds of works with the instructions on the site and possibly a little Googling. I am not trying to dissuade such persons. I am only saying that the second you diverge from the parameters I set forth, you can no longer just follow the steps below as I lay them out.

Okay, here we go!

Read The Rest

In Which I Review My Own Book For Potential Legal Issues.


So, first, to get it over with: I wrote a book. It’s called My Mother Had Me Tested! and it’s a collection of funny mad science/geek-related short stories. Please have a look. If you think you might enjoy it, please read the free sample. If you still think you might enjoy it, please buy it. Here’s the link:

Okay? Okay.

Now that the plug is done – and I would never suggest that you should buy my book to make the rest of this post easier to follow, no way, not for a minute – I’m going to go over some of the potential legal issues involved with the publication of my book, My Mother Had Me Tested!. (Okay, I’ll stop now. From here on out it’s just MMHMT, and no more links. Promise. :) )

Also, please keep in mind that nothing in this post is intended to be legal advice. I am reviewing my own work and pointing out generally interesting issues regarding it. My goal is not to provide specific answers to legal questions, but show examples of how one might approach these issues, and help you to be more aware of the potential for liability which your own creative endeavors might create. Always consult an attorney licensed in your jurisdiction and familiar with the relevant law *ahem* before making legal decisions.

Okay? Okay.

On with the review!


This one’s easy. I licensed the cover illustration from an online stock photo company called CanStockPhoto. They have a required copyright disclaimer: I included it. The font I used I found online and, after review, I decided that my usage of it for this purpose was acceptable. (Digital font files, by the way, can be copyrighted. Generally speaking, type itself cannot.) There’s no visible person, actual or not, so I don’t have to worry about a likeness release. (More about use of likeness below.) If there were, I’d need one or need to make sure the person I licensed the photo from had one. Stock Photo sites usually make this clear – if it’s marked “editorial,” you probably shouldn’t use it for commercial purposes. If it’s not, it’s probably released, but you should still check. If you commission a cover photo or illustration, make sure your artist provides a likeness release as well as a copyright license if necessary.

Finally, I made the cover myself, so I didn’t have to worry about the copyright on the assembled elements. If I’d had an artist do it for me, I’d have needed a copyright license, but I didn’t, so I didn’t. Next question!

Read The Rest

What If I Don’t Charge?

One of the most common questions related to intellectual property is, “If I don’t charge for (some infringing use like copying characters or whatever) it’s okay, right?”

No, it is not okay.

Here’s an easy way to think about whether giving things away is going to help you when you’re using somebody else’s intellectual property:

Mostly, whether or not you made any money is relevant to calculating damages* and if you’re calculating damages it means YOU’VE ALREADY LOST THE CASE. So just ask yourself: “Do I want to be on the losing side of a case filed by a multbillion-dollar company?” Then proceed accordingly.

*It can be relevant to a Fair Use defense, but again, that’s a defense. If you’re using a defense, it means you have already conceded that your use was, absent the defense, infringing. That’s not a good place to be when, again, your opponent may be a multibillion-dollar company which spends more every year on coffee for lawyers than you’ll make in your whole life.

Copyright Versus Trademark Infringement

This question comes up all the time, and most (non-lawyer) people seem to use the terms almost interchangeably. Or, at the very least, they use “copyright infringement” when they mean “trademark infringement.” (The reverse is much rarer.)

Copyrights and trademarks, generally, have nothing to do with each other. It’s possible to infringe a trademark in a copyrighted artwork, and it’s possible to infringe a copyrighted artwork in the creation of a trademark, but either a use (of either) is infringing, or it isn’t. What exactly the use is is not relevant to whether a copyright or a trademark is being infringed. It might be relevant to Fair Use defenses or damages, but not to the question most people are worried about, which is “Can I do this without infringing someone else’s rights in the first place?”

Trademarks are used to identify the source of a good or service. If you buy something with a Mickey Mouse logo on it, what’s really protected is the consumer’s knowledge that that product either comes from Disney, or from a licensee of Disney.

Copyrights are used to protect artistic creation. You can’t draw your own picture of Mickey Mouse and do whatever you want with it, because Mickey Mouse as an artistic creation is copyrighted.

I used Der Maus as an example because he’s a really good one of how the two things can be intertwined. Eventually, theoretically, the copyright on Mickey Mouse will expire, and people will be able to use him as an element in artistic creations. (This is called “entering the public domain.”) However, as long as Disney uses him to identify the source of goods and services, the trademark will endure. (Trademarks don’t expire: they lapse when the seller of the good or service stops using them for a protracted period of time.)

Another really good example is Bram Stoker’s famous creation “Dracula.” Dracula, the novel, is out of copyright. Anybody who wants to can write stories about Dracula. (They can’t infringe on the copyrights of the later movies, though.) However, suppose that the estate had filed a trademark application for “Dracula” brand opera capes. As long as the estate sells (or licenses the mark for sales of) opera capes, nobody else can make Dracula opera capes.

“Aha!” I hear you cry. “What if I get the trademark ‘Dracula’ for publishing books? Then nobody else can publish Dracula books!” Clever! But no. The Trademark Office will not allow the registration of marks which are functional or merely descriptive. I’m allowed to write about Dracula. I need to be able to identify the character of the book. So such a trademark is both functional and descriptive, and would not be allowed.

Sound complicated? It is. That’s why intellectual property lawyers exist. :) But I hope that this brief explanation will help you understand the basic difference between the two and why the fact that there is no trademark doesn’t mean there is no copyright or vice versa.

Back to top