Law firm takes case to US Supreme Court


John Bursch. Courtesy Warner Norcross & Judd

A locally based law firm is hoping to be cheering at the end of the year after the U.S. Supreme Court hears a copyright case related to cheerleading uniforms.

Warner Norcross & Judd attorneys John Bursch and Matthew Nelson said yesterday that the U.S. Supreme Court has agreed to hear the case Varsity Brands et al v. Star Athletica in its fall 2016 session.

Bursch and Nelson join attorneys Mike Rafferty, of Harris Shelton Hanover Walsh in Tennessee, and Steve Crosby, of Feldman Law Group in New York, who handled the case in the Sixth Circuit Court of Appeals, in representing defendant Star Athletica.

Star Athletica and plaintiff Varsity Brands are competitors that make cheerleading uniforms.

Bursch said Varsity Brands sued Star Athletica for copyright infringement several years ago in federal district court in Tennessee related to Star Athletica’s use of Varsity Brand’s copyrighted designs.

“The district court granted summary judgment to Star Athletica and held the uniforms could not be copyrighted,” Bursch said.

Bursch said copyright law prohibits copyright protection for a useful article.

“Under the Copyright Act, you can’t get copyright protection in a useful article,” he said. “For example, a chair, car, garment, bike rack, light pole, these are things you cannot get a copyright in, because they are useful. We want people to be able to design and make useful things.”

Bursch said additionally, when there is an element of a useful item, which is inseparable from the item, it can’t receive a copyright either.

“You might have a bike rack with an artistic design, but if it goes hand in glove with the function of holding the bike up, you can’t copyright it no matter how creative or original,” he said.

Bursch said in the case of cheerleading uniforms, the question is whether the stripes, chevrons and color blocks are inseparable from the garment or not.

While the federal district court sided with Star Athletica, the U.S. Sixth Circuit Court reversed that decision in a 2-1 vote last year.

“The Sixth Circuit concluded that the copyrights were valid, essentially that you could have a copyright in the stripes and the chevrons and the color blocks of a cheerleader uniform,” Bursch said.

The U.S. Supreme Court will now have the final say in whether Varsity Brand’s designs are copyrightable or not.

“The courts have really struggled with how to tell what is separate,” Bursch said. “It’s called separability analysis. How do you know when its completely separate and copyrightable and, therefore, protectable, or that it is so intrinsically interwoven with the function, the usefulness of the item, that it cannot be copyrighted and anybody is free to use it?”

Bursch said over the years, courts and law professors created nine tests to determine separability, but in its decision, the Sixth Circuit Court rejected all nine and created a 10th test, which it used in making its determination.

“What we asked the U.S. Supreme Court to do is to take a look at all of these and pick the one test that is going to govern all copyright disputes going forward,” he said.

Bursch said the case would have broad implications beyond Varsity Brands and Star Athletica.

“With respect to cheerleading clothes, it would give Varsity a monopoly, because they’d be able to keep all competitors out of their market, but the implications are much broader, because, generally, it would stifle garment manufacturing,” he said. “It would make it much more difficult for stores like Forever 21 and TJ Maxx, which produce clothes based on other designs, they would be prohibited from doing that.

“It is an incredibly important legal issue. A whole number of things we always thought of as useful elements and non-protectable all of a sudden could be subject to a copyright.”

Bursch said those in the 3D printing industry are also concerned the case could impact their ability to produce items in the future.

“They are worried about their ability to encourage people to use 3D printing to duplicate designs,” he said.

After the Supreme Court hears the case in the fall, it will have until June 30 to make its decision.

Bursch noted the Star Athletica case will be his 10th in front of the U.S. Supreme Court and the 11th for Warner’s Appellate and Supreme Court Practice Group.

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