Opposition Brief — Star Athletica, L. L.C. v. Varsity Brands, Inc., 136 S. Ct. 1823 (2016) (No. 15-866)

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OFFICE OF THE CLERK

No. 15-866

IN THE

Supreme Court of the Hnited States

STAR ATHLETICA, L.L.C.,

Petitioner,

VARSITY BRANDS, INC., ET AL.,

Respondents.

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Sixth Circuit

BRIEF FOR THE RESPONDENTS IN

OPPOSITION

GRADY M. GARRISON WILLIAM M. JAY

ADAM S. BALDRIDGE Counsel of Record

BAKER, DONELSON, BRIAN T. BURGESS

BEARMAN, CALDWELL & GOODWIN PROCTER LLP

BERKOWITZ P.C. 901 New York Ave., N.W.

165 Madison Ave.. Washington, DC 20001

Suite 2000 wjay@goodwinprocter.com

Memphis, TN 38103 (202) 346-4000

Counsel for Respondents

(Additional counsel listed on inside cover)

March 4, 2016

—

THOMAS KJELLBERG

J. CHRISTOPHER JENSEN

COWAN, LIEBOWITZ &

LATMAN, P.C.

1133 Ave. of the Americas

New York, NY 10036

ROBERT D. CARROLL

CHRISTINE DIETER

GOODWIN PROCTER LLP

Exchange Place

Boston, MA 02109

QUESTIONS PRESENTED

The Copyright Act provides copyright protection to

original “pictorial, graphic, and sculptural works.” 17

U.S.C. § 102(a)(5). Designs of “useful article[s]” fall

within this category and are eligible for copyright

protection if the design “incorporates pictorial, graph-

ic, or sculptural features that can be identified sepa-

rately from, and are capable of existing independent-

ly of, the utilitarian aspects of the article.” Jd. § 101.

Respondents have registered copyrights for several

two-dimensional graphic designs that they incorpo-

rate onto athletic apparel. The Sixth Circuit held

that these designs were separable from the utilitari-

an aspects of the clothing on which they appear and

therefore are eligible for copyright protection.

The questions presented are:

1. Did the Sixth Circuit err by holding that re-

spondents’ two-dimensional graphic designs are enti-

tled to copyright protection as “pictorial, graphic, and

sculptural works” under 17 U.S.C. § 102(a)(5)?

2. Did the Sixth Circuit commit any reversible

error by holding that the Copyright Office’s registra-

tion decisions merited the modest deference available

under Skidmore v. Swift & Co., 323 U.S. 134 (1944),

after concluding that the Office had applied a con-

sistent approach to similar designs and had explained

its decisions in several well-reasoned letters?

—_—e ke ti

CORPORATE DISCLOSURE STATEMENT

Pursuant to Rule 29.6, respondents state:

Varsity Brands, Inc. (n/k/a Varsity Brands, LLC),

Varsity Spirit Corporation (n/k/a Varsity Spirit LLC),

and Varsity Spirit Fashion & Supplies, Inc. (n/k/a

Varsity Spirit Fashion & Supplies, LLC) are indirect

subsidiaries of Hercules VB Holdings, Inc. No public-

ly held company owns 10% or more of any of the re-

spondents.

as ali

TABLE OF CONTENTS

PAGE

QUESTIONS PRESENTED................2..:c0cccceseesseeeeseees i

CORPORATE DISCLOSURE STATEMENT............. ii

TABLE OF AUTHORITIES .......0...........:cccccccsseceeseeeees Vv

takin csindisinntsivenesinediasiupiansipeaiieniidenias 1

a iiicicteniniininsinncsinndiananigsainntinininitnimpiatansinnanie 4

A. The Copyright Act Provides Copyright

Protection For Graphic Designs, Including

Graphic Designs That Are Separable From

The Useful Articles That Incorporate Them.. 4

B. Varsity Is The Author Of Many Two-

Dimensional Graphic Designs, Which

Varsity Uses On Athletic Apparel.................. 5

C. The Copyright Office Has Registered

Hundreds Of Varsity’s Two-Dimensiona!

Graphic Designs, Including The Five

Designs At Issue In This Case ....................... 7

J 8

REASONS FOR DENYING THE WRIT................... 12

I. The Sixth Circuit’s Conclusion That Varsity’s

Fabric Designs Are Separable From Garments’

Utilitarian Aspects Does Not Warrant Review.. 13

A. There Is No Circuit Split On The Question

Whether Two-Dimensional! Graphic

Designs On Garments Are Copyrightable ... 14

B. Petitioner's Argument Turns On Fact-

C. The Purported Circuit Division Over The

Separability “Test” Is Overstated And Is

Not Implicated By The Facts Of This Case . 22

Il. The Sixth Circuit’s Decision That The

Should Receive Skidmore Deference Does Not

LE a ES 8 no A 27

Ill. The Interlocutory Petition Is A Poor Vehicle

RE ERO ARE, ee Ma aD 35

TARE ENTRY ESTED RMASTORE AO Meas PTA 37

—————— eee lll lhl lee ,.- 2am 5

Dit nt I il i ll ll ee

TABLE OF AUTHORITIES

PAGE(S)

CASES

Brandir Int v. Cascade Pac. Lumber

Co.,

834 F.2d 1142 (2d Cir. 1987).......................... 23, 26

Carol Barnhart Inc. v. Economy Cover

Corp..,

773 F.2d 411 (2d Cir. 19885)................ 23, 26, 29, 30

Chevron U.S.A. Inc. v. Nat. Res. Def.

Council, Inc.,

RT TT 2

Chosun Inti, Inc. v. Chrisha Creations

Ltd.,

413 F.3d 324 (2d Cir. 2005)...................... 17, 18, 22

Folio Impressions, Inc. v. Byer Cal.,

ge yy | 17

Galiano v. Harrah's Operating Co.,

416 F.3d 411, 414, 422 (5th Cir.

Hart v. Dan Chase Taxidermy Supply

Co.,

pA FL 18

Home Legend, LLC v. Mannington Mills,

Inc.,

784 F.3d 1404 (11th Cir.), cert.

denied, 136 S. Ct. 232 (2015) .................cccccseeeseees 27

Inhale, Inc. v. Starbuzz Tobacco, Inc.,

755 F.3d 1038 (9th Cir.), cert. denied,

Lk 25, 28

Jovani Fashion Ltd. v. Fiesta Fashions,

500 Fed. Appx. 42 (2d Cir. 2012), cert.

denied, 133 S. Ct. 1586 (2013) .......................000.. 16

Jovani Fashion, Ltd. v. Cinderella

Divine, Inc..,

808 F. Supp. 2d 542 (S.D.N.Y. 2011)................... 16

Kieselstein-Cord v. Accessories by Pearl,

Inc.,

632 F.2d 969 (2d Cir. 1960)....................0...<0+. 23, 26

Knitwaves, Inc. v. Lollytogs Lid.,

71 F.3d 996 (2d Cir. 1995)...................000.ccee 17, 27

Masquerade Novelty, Inc. v. Unique

Indus., Inc.,

OID F.Bs SSS (Ba Cir. 1GBO).........eccccccssscccescescesees 32

Mazer v. Stein,

LE Ne a eee 5

Microsoft Corp. v. i4i Lid. P’ship,

a 32

Mt. Soledad Mem Ass'n v. Trunk,

EL 35

Norris Indus., Inc. v. Intl Tel & Tel.

Corp.,

696 F.2d 918 (11th Cir. 1983) ..............0..........8. 29

Pivot Point Intl, Inc. v. Charlene Prods.,

Inc.,

372 F.3d 913 (7th Cir. 2004) .......................02 23, 26

Poe v. Missing Persons,

745 F.2d 1238 (9th Cir. 1984) .................ccceeeeeeees 25

Skidmore v. Swift & Co..,

LL passim

Southco, Inc. v. Kanebridge Corp.,

390 F.3d 276 (3d Cir. 2004) (en banc).................. 28

Universal Furniture Int, Inc. v.

Collezione Europa USA, Inc.,

618 F 3d 417 (4th Cir. 2010) (per

ESS SE 24, 26

Va. Military Inst. v. United States,

a e 35

Whimsicality, Inc. v. Rubie'’s Costume

Co.,

891 F.2d 452 (2d Cir. 1989).................0.cccccccceeeeees 18

Wos v. E.M.A. ex rel. Johnson,

8 Te roe 29

STATUTES

Be TT asnneiccrinrsmininisnndtinipinciteduionabigineniiiiiiael passim

if 8 one aos 1, 4, 10

vii

—— = —_— SS —_- - —

nnn aes

RULES AND REGULATIONS

le Mts etennencsasanesewsannsepsonvessemnsenens

Registrability of Costume Designs,

56 Fed. Reg. 56,530 (Nov. 5, 1991) .......

LEGISLATIVE HISTORY

H.R. Rep. No. 94-1476 (1976) ..............000006

Protection for Fashion Design: Hearings

on H.R. 5055 Before the Sudcomm. on

Courts, the Internet, and Intellectual

Property of the H. Comm. on the

Judiciary, 109th Cong., 2d Sess.

I ittnccsninsinshcivensanoniineanveseesengneseresees

OTHER AUTHORITIES

Compendium III of Copyright Office

Practices (2014):

ST iticinnevnscesesaenqvemmmesnnsneesenenscneve

SE icncicenspricanweinacenensemncspiseeinene

1 Goldstein on Copyright § 2.5.3 (3d. ed.

vill

8, 10, 31, 32

soneuponpanses 17

2 Patry on Copyright (2015)

a aoa 25

EEE LEER ee i ee OE rae EE 26

hee lien cnlecaelat ainda ott teiniacetide slidintil 2

Shira Perlmutter, Conceptual

Separability and Copyright in the

Designs of Useful Articles, 37 J.

S. Shapiro et al., SUPREME COURT

PRACTICE (100R Od. BOIS) ............cccccccccccsceccesscceses 35

BRIEF FOR THE RESPONDENTS

IN OPPOSITION

Neither question presented implicates any circuit

split, and there is no basis for this Court’s review.

Petitioner’s primary circuit-split claim (concerning

separability as it relates to clothing design) blurs a

basic distinction in copyright law. And petitioner's

second question presented (concerning Skidmore def-

erence) is both splitless and inconsequential.

Respondents (“Varsity”) have registered hundreds

of two-dimensional graphic designs with the Copy-

right Office. Varsity incorporates the designs onto

various items of athletic apparel. The Sixth Circuit

held that five of Varsity’s designs were eligible for

§ 102(a)(5), because, as fabric designs, they are sepa-

rable from the utilitarian aspects of the cheerleading

uniforms on which they appear. Pet. App. 45a-50a.

The Sixth Circuit’s decision is unremarkable. Courts

routinely hold that two-dimensional graphic designs

like Varsity’s are eligible for copyright protection, re-

gardless of whether the design is used on clothing,

rugs, or some other surface. See 1 Nimmer on Copy-

right § 2.08(H], at 2-144 (2015) (“[I]t is now clear”

that “fabric designs” are “copyrightable”). Petitioner

does not identify a single contrary decision.

Instead, petitioner tries to manufacture a circuit

split by comparing the Sixth Circuit’s decision with

decisions from the Fifth and Second Circuit that in-

volve the three-dimensional designs of garments

themselves, often referred to as “dress designs.” In

contrast to “fabric designs,” “dress” or garment de-

signs describe “the shape, style, cut, and dimensions”

of a garment. 1 Nimmer on Copyright § 2.08[H], at

2-143. The distinction between fabric design (copy-

rightable) and dress design (typically not copyrighta-

ble) “has been uniformly followed by the courts.” 2

Patry on Copyright § 3:151, at 3-457 (2015). The

Sixth Circuit applied that distinction here and con-

cluded that Varsity’s graphic designs were “like fab-

ric design{s].” Pet. App. 44a, 47a-50a. The Fifth and

Second Circuits have applied this distinction as well.

The two decisions that petitioner claims (Pet. 27)

“conflict{] directly” with the decision below are fully

explained by this basic factual difference, as the

Sixth Circuit recognized in distinguishing both cases.

See Pet. App. 49a-50a & n.3.

Resisting this conclusion, petitioner insists (Pet. 27,

29) that Varsity’s designs cannot be copyrighted be-

cause the “braid[s], chevrons, and color blocks” they

use supposedly are what make cheerleading uni-

forms real cheerleading uniforms. Petitioner’s con-

tention is flawed, as the Sixth Circuit correctly real-

ized. See Pet. App. 43a-44a. But regardless, peti-

tioner’s fact-bound assertion about the essence of

cheerleading uniforms does not warrant review

Petitioner also makes a more generalized claim

(Pet. 21-26) that courts are divided over the test for

separability under the Copyright Act, 17 U.S.C.

§ 101. This Court has repeatedly and recently de-

nied petitions raising this issue,’ and there is no

cause to change course here. Contrary to petitioner's

claims of circuit conflict, many of the supposedly dis-

' See Home Legend, LLC v. Mannington Mills, Inc., No. 15-117

(cert. denied Oct. 5, 2015); Inhale, Inc. v. Starbuzz Tobacco,

Inc., No. 14-396 (cert. denied Dec. 8, 2014); Jovani Fashion,

Ltd. v. Fiesta Fashions, No. 12-863 (cert. denied Mar. 18, 2013).

tinct “tests” petitioner discusses simply recite factors

that courts have considered relevant in particular

cases—as demonstrated by petitioner’s reliance on

multiple cases from the same circuit (the Second Cir-

cuit) to support its supposed split. See Pet. 21-23.

Nor did the Sixth Circuit somehow create a tenth

test merely by “restat[ing]” and applying the Copy-

right Act’s definitional section. Pet. 24. To the con-

trary, the Sixth Circuit noted that its approach,

which incorporated several considerations from the

various approaches, “is consistent with the holdings

of .. . sibling circuits.” Pet. App. 38a.

Petitioner told the Sixth Circuit that “[a] single

one-size-fits-all separability test for all useful articles

is neither possible nor desirable,” Pet. C.A. Br. 29,

and even now petitioner declines to endorse any one

test, see Pet. 26. Even if it were possible to fashion

an all-encompassing test for every kind of useful ar-

ticle, this case would be a poor vehicle to create one.

Two-dimensional graphic designs like Varsity’s can

be copyrighted under any plausible standard.

The second question presented, concerning whether

courts may give the responsible agency’s copyright-

registration decisions the modest respect available

under Skidmore v. Swift & Co., 323 U.S. 134 (1944),

also does not warrant review. This issue implicates

no circuit split and did not affect the outcome below.

Indeed, the Sixth Circuit discussed deference at

length mainly to reject the higher level of deference

that applies under Chevron U.S.A. Inc. v. Natural

Resources Defense Council, Inc., 467 U.S. 837 (1984).

Finally, this petition is a poor vehicle to review ei-

ther question presented because it is interlocutory.

The Sixth Circuit decided only that Varsity’s designs

could be protected as graphic works and “express/ed]

no opinion” about petitioner’s other defenses to in-

fringement. Pet. App. 50a. If the lower courts on

remand were to hold that petitioner is not liable for

infringement, that would eliminate any need to con-

sider the questions presented here.

The petition for certiorari should be denied.

STATEMENT

A. The Copyright Act Provides Copyright

Protection For Graphic Designs, Includ-

ing Graphic Designs That Are Separable

From The Useful Articles That Incorpo-

rate Them

Authors can obtain copyright protection for several

categories of works of authorship, including “pictori-

al, graphic, and sculptural works.” 17 U.S.C.

§ 102(a)(5). “Pictorial, graphic, and sculptural

works” are defined to include “two-dimensional and

three-dimensional works of fine, graphic, and applied

art.” Id. § 101. The category also includes “works of

artistic craftsmanship insofar as their form but not

their mechanical or utilitarian aspects are con-

cerned.” Ibid.

In the case of “useful article[s],” designs that “in-

corporate[] pictorial, graphic, or sculptural features”

are eligible for copyright if the features “can be iden-

tified separately from, and are capable of existing in-

dependently of, the utilitarian aspects of the article.”

Ibid. “{U]seful article” is defined to mean an “article

having an intrinsic utilitarian function that is not

merely to portray the appearance of the article or to

convey information,” and includes “|a]n article that is

normally a part of a useful article.” Jbid.

In providing copyright protection to the separable

pictorial, graphic, or sculptural features of useful ar-

ticles, the Copyright Act “expressly adopts” this

Court’s holding in Mazer v. Stein, 347 U.S. 201

(1954), which construed an earlier version of the

statute. 1 Nimmer on Copyright § 2.08[B}[3], at 2-90.

In Mazer, the Court held that statuettes that were to

be mass-produced and used as lamp stands enjoyed

the lamp stands’ “form but not their mechanical or

utilitarian aspects.” 347 U.S. at 217-18 (quotation

marks omitted).

B. Varsity Is The Author Of Many Two-

Dimensional Graphic Designs, Which

Varsity Uses On Athletic Apparel

Varsity designs, manufaci:res, and sells high-

quality apparel and accessories for use in cheerlead-

ing and other athletic activities. Pet. App. 3a. Un-

like some of its competitors, Varsity devotes signifi-

cant resources to employing its own designers, who

create original graphic designs. Varsity then incor-

porates the designs onto its athletic apparel and ac-

cessories. Id. at 3a-4a.

Varsity’s design team begins by creating two-

dimensional sketches on paper. These “design con-

cepts consist[] of ‘original combinations, positionings,

and arrangements of elements which include V's

(chevrons), lines, curves, stripes, angles, diagonals,

inverted V’s, coloring, and shapes.” Pet. App. 3a.

The artistic judgment of Varsity’s designers is not

constrained by functional considerations concerning

how a garment eventually would be made. Ibid.

Graphic designs can be incorporated onto clothing

in multiple ways, including by (1) cutting and sewing

together panels of fabric; (2) sublimating the design

by transferring ink onto fabric through a heating

process; (3) embroidering the design onto the fabric;

and (4) screen printing, which involves spraying ink

onto the surface of the garment. Pet. App. 4a. Varsi-

ty primarily uses the “cut-and-sew” and sublimation

methods. Id. at 4a & n.1, 60a.

Customers select from among Varsity’s many “in-

terchangeable” designs, and then customize the col-

ors, shape, and braiding? for the garment on which

the selected pattern will appear. Jd. at 4a, 45a-46a.

Varsity’s designs can be, and have been, applied to

products other than cheerleading uniforms. Pet.

App. 46a. For example, Varsity has applied its de-

signs to jackets, t-shirts, practice wear, and warm-

ups. Ibid. In addition, Varsity’s expert explained

that Varsity’s designs could be incorporated onto

“painted canvases, tote bags, notebooks, iPhone co-

vers, or any number of consumer goods.” Varsity’s

Statement of Undisputed Facts (“Varsity’s SUF”)

§ 40, ECF No. 173;° Declaration of Susan Scafidi

9 17 & Ex. 3, ECF No. 173-4.

2 Petitioner incorrectly asserts (Pet. 14) that Varsity uses braids

to cover the seams in its finished garments. In fact, whether

and where braids are used is determined by the artist’s design.

Declaration of Kimberly Williams § 5, ECF No. 173-2. Moreo-

ver, braids are not used for designs that are incorporated onto

garments through the sublimation process. Declaration of Gary

Spencer 4 8, ECF No. 173-1.

* All ECF numbers refer to the district court docket.

C. The Copyright Office Has Registered

Hundreds Of Varsity’s Two-Dimensional

Graphic Designs, Including The Five De-

signs At Issue In This Case

Varsity has registered hundreds of original graphic

designs with the Copyright Office as_ two-

dimensional artwork. Pet. App. 4a, 2la-22a. Regis-

tering these designs has involved extensive back-

and-forth between the Copyright Office and Varsity.

The Copyright Office registered more than 50 of

Varsity’s designs (not at issue here) following an ini-

tial rejection. Varsity’s SUF 4 35. Contrary to peti-

tioner’s assertion (Pet. 13), the initial refusals were

based on questions about originality, not functionali-

ty. See Varsity’s SUF 44 35-37; Declaration of Brian

Carroll 4 5 & Ex. A, ECF No. 173-6. Varsity re-

quested reconsideration, and the Copyright Office,

after careful review, ultimately concluded that all of

the designs—the “treatment and arrangement of the

elements, coupled with their coloring”—were origina!

and separable. Declaration of Brian Carroll Ex. A.

The Office set forth its reasoning in letters issued to

Varsity. /bid.; Pet. App. 21a-22a.

None of Varsity’s designs—including the five at is-

sue here—was registered under the Copyright Of-

fice’s “Rule of Doubt.” Pursuant to that rule, the Of-

fice may register a design despite reasonable doubt

that the submitted material constitutes copyrighta-

ble subject matter—depriving the copyright of a pre-

sumption of validity. See Compendium III of Copy-

right Office Practices § 607, at 600-35-600-36 (2014).

When the Office relies on this rule, it adds an anno-

tation to the certificate of registration and the online

public record. Ibid.

This case involves the infringement of five of Varsi-

ty’s two-dimensional graphic designs, which were

created by Varsity’s in-house designers. Joint

Statement of Undisputed Facts (“Joint SUF”) 94 7-

45, ECF No. 170. Varsity received a federal copy-

right registration for each of the designs. Pet. App.

4a-10a. Three of the designs were registered by the

tion, making them eligible for a presumption of va-

lidity under 17 U.S.C. § 410(c). Pet. App. 15a. The

deposit materials, which display the registered de-

signs, are reproduced in the Sixth Circuit’s opinion.

Id. at 5a-9a.*

D. Procedural History

1. Petitioner Star Athletica sells athletic uni-

forms and accessories. Pet. App. 10a. Shortly after

its founding in 2010, petitioner began to sell cheer-

leading uniforms. Jbid. Varsity observed that peti-

tioner’s marketing materials included uniforms that

depicted five of Varsity’s registered designs.

‘ Petitioner erroneously asserts (Pet. 14-15) that Varsity de-

scribed the copyrighted work differently in litigation than it did

before the Copyright Office. In fact, Varsity has consistently

represented that its copyright was for two-dimensional graphic

designs depicted in its deposit materials, not for three-

dimensional garments. See Varsity C.A. Reply Br. 11-15. Peti-

tioner’s contention that Varsity has extended its copyright to

cover three-dimensional garments—rather than the designs

that appear on those garments—has no basis in the record.

See Pet. 32 (citing Jack Adelman, Inc. v. Sonners Gordon, Inc.,

112 F. Supp. 187 (S.D.N.Y. 1934)).

Varsity filed suit against petitioner, asserting, inter

alia, five claims for copyright infringement. Pet.

App. 10a, 61a. The district court denied petitioner's

motion to dismiss, and also granted Varsity’s motion

to dismiss petitioner's antitrust counterclaim. See

Order (W.D. Tenn. Apr. 21, 2011), ECF No. 56; Order

(W.D. Tenn. Oct. 31, 2011), ECF No. 80.5 Following

discovery, the parties cross-moved for summary

judgment. Pet. App. lla. With respect to Varsity’s

signs were not protected because the designs were

for useful articles and were not separable from the

utilitarian function of cheerleading uniforms. /d. at

lla-12a.

2. The district court granted summary judgment

to petitioner on Varsity’s copyright claims. Pet. App.

58a-78a. The district court based its conclusion sole-

ly on petitioner's separability argument. /d. at 50a.

In deciding the separability issue, the district court

identified its “central” task as “think[ing] about, and

com[ing] close to defining, the essence of a ‘cheer-

leading uniform.” Pet. App. 58a. The district court

concluded that Varsity’s graphic designs are not sep-

arable from cheerleading uniforms because, the court

believed, the designs are intrinsic to “the core of the

ideal [] of ‘cheerleading-uniform-ness.” Jd. at 59a.

The district court acknowledged Varsity’s argument

that a “blank cheerleading silhouette” could cover

the body just as well as any other cheerleading uni-

* Despite the dismissal of its counterclaim, petitioner recycles

its antitrust allegations in its petition as though they were fact.

See Pet. 13, 31; see also Public Knowledge Amicus Br. 8-9. Peti-

tioner’s allegations are both meritless and entirely irrelevant to

the questions presented.

form. Jd. at 74a. But the court thought this was ir-

relevant, because the designs supposedly were too

closely associated with “the ideal of a ‘cheerleading

uniform” to be copyrighted. Jd. at 59a, 75a. In

reaching this conclusion, the district court noted

Varsity’s contention that, under 17 U.S.C. § 410(c),

Varsity was entitled to a presumption that the copy-

rights it registered within five years of first publica-

tion were valid, but the court concluded the pre-

sumption was “easily dispensed with” in this case.

Pet. App. 64a n.2.

3. The Sixth Circuit reversed. Pet. App. la-53a.

The court held that Varsity’s designs are eligible for

§ 102(a)(5). The court remanded to the district court

for further proceedings, allowing the district court to

address the remaining issues of infringement, origi-

nality, and damages in the first instance. Id. 3, 50,

52-53.

a. The Sixth Circuit began its opinion by ad-

dressing the level of deference that should apply to

the Copyright Office’s determination that Varsity’s

designs are the subject of valid copyrights. Pet. App.

15a-22a. The court concluded that Chevron defer-

ence did not apply to the Copyright Office’s registra-

tion decisions. Jd. at 19a-21la. Instead, the court

held that such decisions can receive only Skidmore

deference, under which judicial deference depends on

the quality and consistency of the agency’s reason-

ing. Id. at 21a. In this case, the court concluded that

some deference was appropriate because the Copy-

right Office had “consistently found,” that compara-

ble graphic designs were copyrightable, and had ex-

plained its previous registration decisions in letters

to Varsity that “use[d] sound legal reasoning” that

was grounded “in the text of the statute.” Jd. at 22a.

The Sixth Circuit then turned to what the court

identified as “the question that strikes at the heart of

this appeal”: whether “cheerleading uniforms are

truly cheerleading uniforms without the stripes,

chevrons, zigzags, and color blocks” used in Varsity’s

designs. Pet. App. 2a; see id. at 22a-50a. Concluding

that they were, the court held that Varsity’s designs

were copyrightable. Jd. at 42a-50a.

The Sixth Circuit based its conclusion on the an-

swers to “a series of questions ... grounded in the

text of the Copyright Act.” Pet. App. 37a. After de-

termining that Varsity’s designs were “works of .. .

graphic ... art” and designs of useful articles, the

court turned to identifying the relevant “utilitarian

function” of Varsity’s garments as “cover[ing] the

body. wick[ing] away moisture, and withstand[ing]

the rigors of athletic movements.” Jd. at 42a-43a.

The court rejected petitioner's much broader view of

function—“identify[ing] the wearer as a cheerlead-

er”—because the statute expressly excludes the mere

“convey|[ing] [of] information” from the definition of

“useful article.” Jd. at 43a (quoting 17 U.S.C. § 101).

Likewise, the court rejected petitioner’s contention

that designs that serve a “decorative function” on

clothing are purely utilitarian and uncopyrightable

because, inter alia, that argument contradicted “well-

established” law recognizing that fabric designs are

eligible for copyright. Jd. at 44a. Applying its un-

derstanding of function, the court concluded that

cheerleading uniforms can exist without Varsity’s

graphic features—indeed, record evidence “estab-

lishe[d]” that “not all cheerleading uniforms must

look alike to be cheerleading uniforms.” Id. at 45a-

46a. The court also determined that Varsity’s de-

signs could exist independently of the uniforms, be-

cause they are transferable to other surfaces includ-

ing other apparel. Jd. at 46a-47a.

Summarizing its decision, the Sixth Circuit ex-

plained that its holding was “consistent with other

courts’ treatment of the protectability of clothing and

the pictorial and graphic features that appear on

clothing.” Pet. App. 47a. The court observed that

courts “have drawn a line between ‘fabric design’ and

‘dress design,” with courts generally regarding only

the former category as readily copyrightable. Id. at

47a-49a. Because Varsity’s graphic designs “are

more like fabric design than dress design,” the court

“hielld that they are protectable subject matter un-

der the Copyright Act.” Jd. at 50a. By contrast, the

court distinguished the Second Circuit and Fifth Cir-

cuit decisions relied upon by petitioner, because

those cases involved “dress designs.” Id. at 48a-49a.

b. Judge McKeague dissented. Pet. App. 53a-

57a. He would have held that “the stripes, braids,

and chevrons on a cheerleading uniform” were not

copyrightable because they are essential to a cheer-

leading uniform’s “identifying function” and cannot

be separated from that function. Jd. at 54a-56a.

REASONS FOR DENYING THE WRIT

The decision below does not create or implicate any

circuit conflict. Petitioner’s contention that other

circuits would hold that Varsity’s designs cannot be

copyrighted ignores a basic distinction in copyright

law between fabric designs like Varsity’s and the de-

signs of garments. This factual distinction—which

the petition skips over—rather than any disagree-

ment over how to interpret the Copyright Act, fully

explains the decisions that petitioner claims are in

conflict with the Sixth Circuit. Petitioner’s »ttempt

to identify a higher-level circuit split over the test for

copyrighting features of useful articles also provides

no basis for review, because every circuit would hold

that two-dimensional graphic designs are eligible for

Petitioner’s second question presented also does not

warrant certiorari. Petitioner does not identify any

circuit that has adopted petitioner's position that

Skidmore deference is categorically inapplicable to

have applied at least this level of deference to Copy-

right Office decisions. Moreover, there is no reason

to believe the modest level of deference available un-

der Skidmore affected the outcome in this case: the

court of appeals spent time on deference primarily to

rule out applying Chevron.

This case is also a poor vehicle because the petition

is interlocutory. If petitioner on remand were to suc-

cessfully defend against infringement, then there

would be no reason to consider either question pre-

sented.

I. The Sixth Circuit’s Conclusion That Var-

sity’s Fabric Designs Are Separable From

Garments’ Utilitarian Aspects Does Not

Warrant Review

The Sixth Circuit’s decision does not implicate or

create any circuit split on the issue of separability

under the Copyright Act. Petitioner’s claims to the

contrary ignore the distinction between’ two-

dimensional surface designs (i.e., fabric designs) and

dress designs, and also substantially overstate any

methodological disagreement in the circuits.

A. There Is No Circuit Split On The Ques-

tion Whether Two-Dimensional Graphic

Designs On Garments Are Copyrightable

Although petitioner claims that the circuits are

“hopelessly fractured” on the issue of separability

(Pet. 26), it identifies just two decisions that suppos-

edly “conflict{] directly” (Pet. 27-29) with the decision

below: a Fifth Circuit decision and an unpublished

Second Circuit decision. Petitioner compares apples

and oranges. The Fifth and Second Circuit decisions

are not applicable here because they addressed

whether dress designs (i.e., design features of gar-

ments) not fabric designs (i.e., graphic designs that

may appear on the surface of garments) are copy-

rightable. The Sixth Circuit recognized this well-

settled difference and expressly distinguished both

the Fifth and Second Circuit decisions. See Pet. App.

49a & n.13.

1. In Galiano v. Harrah’s Operating Company,

the Fifth Circuit held that the design of a uniform for

casino employees—and in particular the uniform’s

arrangement of “buttons, pleats, and collars”—could

not be copyrighted. 416 F.3d 411, 414, 422 (2005).

The court reasoned that these design features were

not separable from the utilitarian features of the uni-

forms. Id. at 422.

The Fifth Circuit cautioned that its reasoning was

applicable to “garment design only,” which the court

specifically distinguished from “fabric design.” 416

F.3d at 419-20, 421. The court explained that

“{flabric designs include patterns or artistic features

imprinted onto a fabric or that appear repeatedly

throughout the dress fabric,” whereas garment or

“dress” designs “set forth the shape, style, cut, and

dimensions of converting fabric into a finished dress

or other clothing garment.” /d. at 419. The court

recognized that fabric designs “are generally entitled

to copyright protection” because “one can generally

separate the artistic elements of thfe] design from

the utility of the wearable garment.” I/bid. By con-

trast, the court explained, designs of garments them-

selves “generally do not have artistic elements that

can be separated from the utilitarian use of the gar-

ment.” Jbid. Concluding that the plaintiffs copy-

right for the layout of buttons, pleats, and collars on

casino uniforms was a garment design with no sepa-

rable creative features, the Fifth Circuit held that

designs were not copyrightable. Jd. at 421-22.

As the Fifth Circuit itself explained, Galiano’s hold-

ing does not apply to the graphic designs at issue in

this case. As discussed, pp. 11-12, supra, the Sixth

Circuit recognized the same distinction between

“fabric designs” and “dress designs”; the Sixth Cir-

cuit simply concluded that, in contrast to the casino

uniform design in Galiano, “the graphic features of

Varsity’s cheerleading-uniform design are more like

fabric design than dress design.” Pet. App. 50a (em-

phasis added). The Sixth Circuit indicated that it

likely would have reached the same result as the

Fifth Circuit if presented with the same garment de-

sign, because “the aesthetic features of th[e] [casino]

uniforms could not be identified separately from” and

were not “capable of existing independently of, the

utilitarian aspects of the uniform pieces.” Pet. App.

49a n.13 (quotation marks omitted).

The two circuits thus agreed on the basic legal dis-

tinction between design categories, and the different

outcomes simply turned on the different facts. Peti-

tioner may disagree with the Sixth Circuit’s charac-

terization of Varsity’s designs. See Pet. 17 (claiming,

without support, that the two-dimensional graphic

designs are somehow related to the “shape, contour,

cut, style, and fit of cheerleading uniforms” even

though they can be added onto garments through,

e.g., sublimation). But petitioner’s fact-bound asser-

tion does not warrant review.

2. The Second Circuit's unpublished summary

order in Jovani Fashion Limited v. Fiesta Fashions,

500 Fed. Appx. 42 (2012), cert. denied, 133 S. Ct.

1596 (2013), is also distinguishable. In Jovani, the

court addressed whether three-dimensional design

features for a prom dress were copyrightable. The

court held that they were not, rejecting the argument

that particular decorative features—“sequins and

crystals,” “horizontal satin ruching at the dress

waist[,] and layers of tulle on the skirt”—were sepa-

rable from the dress’s utilitarian furiction. Jd. at 44.°

The Jovani summary order provides no reason to

believe the Second Circuit would have reached a dif-

ferent result from the Sixth Circuit with respect to

Varsity’s two-dimensional graphic design. Again, the

Sixth Circuit expressly agreed with the holding in

* The plaintiff in Jovani “acknowledged that there is no discern-

ible pattern of sequins” in its design and therefore “conceded

that it [was] not claiming a copyright in the fabric designs of its

dress.” Jovani Fashion, Lid. v. Cinderella Divine, Inc., 808 F

Supp. 2d 542, 551 (S.D.N.Y. 2011). As a result, the district

court distinguished precedents that “concerned the pattern of

an object—a fabric design—that generally could be copyrighta-

ble in isolation.” [hid.

Jovani, explaining that the “creative arrangement”

of the dress features in that case “do not qualify for

“to clothe the body.” Pet. App. 49a. Thus, Jovani

was about garment design and not fabric design.

The Sixth Circuit’s endorsement of Jovani’s outcome

belies petitioner’s claim that there is a conflict be-

tween the decisions.

In any event—and fatal to petitioner’s argument—

because the Jovani summary order lacks preceden-

tial status in the Second Circuit, it cannot provide

the basis for a circuit split. See 2d Cir. R. 32.1.1.

Published Second Circuit decisions are consistent

with the Sixth Circuit’s decision here.’ For example,

the Second Circuit has repeatedly recognized a dis-

tinction between fabric designs and garment designs

and held that the former are copyrightable. See, e.g.,

Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002

(2d Cir. 1995) (“fabric designs, such as the artwork

on... sweaters” are protectable by copyright); Folio

Impressions, Inc. v. Byer Cal., 937 F.2d 759, 762-63

(2d Cir. 1991) (distinguishing between “fabric de-

signs’ and “dress designs” in a case involving “print-

ed textile[]” designs for imprinting on apparel).

Moreover, the Second Circuit has rejected argu-

ments, like petitioner's here, that would treat all

“decorative” elements of clothing as functional in

their own right and thus ineligible for copyright. In

Chosun International, Inc. v. Chrisha Creations Ltd.,

413 F.3d 324 (2d Cir. 2005), the court held that the

? Petitioner's amici get this backwards when they argue that

Jovani somehow qualifies published circuit precedent. See

Formlabs Amicus Br. 14. Non-precedential summary orders do

not change circuit law, and they provide no basis for certiorari.

plaintiff stated a claim for copyright infringement of

Halloween costume designs. Jd. at 329-30. The

court reasoned that the plaintiff could show that the

sculpted “heads” on the costumes were separable

from the costume’s function as clothing. Jbid. In do-

ing so, the court “express[ed] skepticism” about the

defendant’s contention that the costume’s useful

function included “masquerad[ing] as an animal

character” rather than merely “cloth{ing] the wear-

er’s body.” Jd. at 329 n.3. As the court explained,

such an expansive approach to functionality was “at

odds with the Copyright Act’s very definition of ‘use-

ful articles,” which specifies that “portray[ing] the

appearance of something” is not a “useful” function.

Ibid. (citing 17 U.S.C. § 101); see also Hart v. Dan

Chase Taxidermy Supply Co., 86 F.3d 320, 323 (2d

Cir. 1996) (taxidermy mannequin was not a “useful

article” because its function was merely to portray

the appearance of a fish).*

The Sixth Circuit applied the same reasoning in

this case, rejecting petitioner’s contention that a pic-

torial, graphic, or sculptural work’s “decorative” ele-

ments are inherently functional and ineligible for

* Petitioner briefly alludes (Pet. 29 n.10) to the Second Circuit's

statement in an earlier opinion that “decorative elements” are

“intrinsic to the decorative function of clothing” and thus

generally ineligible for copyright. Whimsicality, Inc. v. Rubie’s

Costume Co., 891 F.2d 452, 455 (1989). This statement was

dicta because the court went on to explain that it “need not ad-

dress” separability and decided the case on a different ground.

Ibid. The Second Circuit has not applied the dicta in a pub-

lished opinion, and commentators have criticized it as “remark-

able language” that is contrary to the text and purpose of the

Soc’y U.S.A. 339, 370 (1990).

between these circuits.

3. Petitioner’s claim (Pet. 30-32) that the Sixth

Circuit’s decision breaks new ground because it con-

tradicts “deliberate congressional inaction” conflates

different types of designs, just like petitioner’s case-

law analysis. Debate in Congress has focused on

whether the designs of garments and other industri-

al items themselves—e.g., the shape of a dress or of a

television set—should receive copyright protection.

See, e.g., Protection for Fashion Design: Hearings on

H.R. 5055 Before the Subcomm. on Courts, the Inter-

net, and Intellectual Property of the H. Comm. on the

Judiciary, 109th Cong., 2d Sess. (2006) (statement of

the U.S. Copyright Office) (summarizing congres-

sional debate on this issue over time). The copy-

rightability of two-dimensional designs that appear

on garments and other useful articles has been un-

derstood differently. For example, petitioner cites

(Pet. 30) a House Committee Report on the 1976 Act

that petitioner claims rejected the copyrightability of

“garment designs.” But that same Committee Report

recognized that “two-dimensional . . graphic

work[s]” that are “printed on or applied to utilitarian

articles such as textile fabrics, wallpaper, containers,

and the like” are eligible for copyright protection.

H.R. Rep. No. 94-1476, at 55 (1976). The legislative

debate over garment design thus gives petitioner no

support.

B. Petitioner’s Argument Turns On Fact-

Bound Assertions About Cheerleading

Uniforms

Because graphic designs that appear on clothing or

other useful articles routinely receive copyright pro-

tection, petitioner’s claim that Varsity’s graphic de-

signs are different depends on factual assertions

about the unique nature of cheerleading uniforms.

The district court believed that defining the “the es-

sence,” or “ideal” form, of a cheerleading uniform was

the “central” issue presented in the case, and the

court ultimately concluded that Varsity’s designs

could not be copyrighted because a uniform without

them would lack the requisite “cheerleading-

uniform-ness.” Pet. App. 58a-59a. The Sixth Circuit

also believed that the true nature of cheerleading

uniforms “strikes at the heart” of the case (Pet. App.

2a), but the court adopted a different understanding

of the uniform’s essential characteristics (Pet. App.

43a-46a).®

Petitioner continues to rely on this framing. Citing

only the district court’s opinion, petitioner claims

that the “braids, chevrons, and color blocks” in Varsi-

ty’s designs are not copyrightable because “these

decorative elements of cheerleading uniforms are in-

trinsically linked to the utilitarian function of cheer-

leading uniforms—identifying the wearer as a cheer-

leader, associating the wearer with a certain team,

and enhancing the wearer's attractiveness.” Pet. 29;

* Judge McKeague’'s dissent likewise relied on his aesthetic

judgment that a “blank white pleated skirt and crop top” was

not “appropriate attire for a member of a cheerleading

squad.” Pet. App. 53a.

see also Pet. C.A. Br. 32 (arguing that although “[a]

sweater is still a sweater” without a particular pat-

tern on the front, a “cheerleading uniform is not a

cheerleading uniform without the constituent ele-

ments of team colors, stripes and chevrons”).

The Court should reject petitioner’s invitation to

review the metaphysics of cheerleading uniforms.

Unsurprisingly, there is no circuit split on the ques-

tion whether a cheerleading uniform without “braids,

chevrons, and color blocks” is really a cheerleading

uniform. And deciding a case that turns on fact-

bound assertions about the “essence” of cheerleading

uniforms would offer little guidance to lower courts

about general copyright principles.

The Sixth Circuit got this narrow question right in

any event. As the Sixth Circuit explained, it is per-

fectly possible to conceptualize a cheerleading uni-

form that exists without Varsity’s graphic designs.

Citing photos in the record, the Sixth Circuit noted

numerous examples of “plain white” cheerleading

tops and skirts that are “easily identified as cheer-

leading uniforms”—and serve the same functions by

allowing “the wearer to cheer, jump, kick, and flip”—

yet lack the “stripes, chevrons, zigzags, or color-

blocking” featured in Varsity’s designs. Pet. App.

45a.

Moreover, the Sixth Circuit also correctly held that

Varsity’s graphic designs can exist independently of

cheerleading uniforms. Pet. App. 46a-47a. As the

court recognized, Varsity’s designs have been “incor-

porated onto the surface of a number of different

types of garments,” including not only cheerleading

uniforms but also “practice wear, t-shirts, warm-ups,

and jackets.” Jd. at 46a. Indeed, the Varsity designs

could be “printied] or paintied]” and displayed “on

the wall as art.” Id. at 47a. The designs accordingly

satisfy the statutory criteria for copyright protection,

because they can “be identified separately from, and

are capable of existing independently of, the utilitar-

ian aspects of” cheerleading uniforms and other

clothing. 17 U.S.C. § 101.

Petitioner's insistence (Pet. 29) that Varsity’s

graphic designs are inseparable from cheerleading

uniforms because they “identify{] the wearer as a

cheerleader,” is contrary to the statutory text. The

of a useful article does not include design features

that merely “portray the appearance of the article or

... convey information.” 17 U.S.C. § 101. See Pet.

App. 43a; Chosun, 413 F.3d at 329 n.3. Yet accord-

ing to petitioner, the mere fact that Varsity’s designs

are associated with cheerleading—and thus may

help to identify a wearer as a cheerleader—means

the designs are inseparable from the useful elements

of cheerleading uniforms. The plain language of the

statute precludes this argument.

C. The Purported Circuit Division Over The

Separability “Test” Is Overstated And Is

Not Implicated By The Facts Of This Case

Petitioner abstracts away from the supposed con-

flict over garments to argue more generally (Pet. 19-

26) that there is a “multi-circuit conflict” over the

test for separability under 17 U.S.C. § 101. But there

is no direct split on this issue, and a case involving a

two-dimensional graphic design is a poor vehicle to

provide guidance to help lower courts resolve more

difficult cases involving the designs of three-

dimensional objects.

1. Petitioner asserts (Pet. 20) that there were “at

least nine different separability tests” before this

case, and that the Sixth Circuit brought forth a tenth

test. But most of the supposed tests on petitioner's

list do not actually belong to different circuits. To

begin with, only six of the ten tests are “judicial

tests” at all. Pet. 23.!° And of those six, two come

from dissenting opinions, while another three are as-

cribed, in whole or in part, to the Second Circuit.

See Pet. 21-22.

In addition, the cited decisions regard the various

“tests” and verbal formulations as complementary,

rather than competing. For example, in Pivot Point

International, Inc. v. Charlene Products, Inc., 372

F.3d 913 (2004), the Seventh Circuit surveyed deci-

sions on the issue of copyright in the creative fea-

tures of useful articles before articulating its “design-

process” approach, which the court believed “recon-

cile{d] the earlier case law.” Jd. at 930. In other

words, what petitioner identifies as a fifth test was

intended by the Seventh Circuit to build upon what

petitioner labels tests two, three, and four. See id. at

924-32; see also Brandir Intl v. Cascade Pac. Lumber

Co., 834 F.2d 1142, 1145 (2d Cir. 1987) (stating that

its focus on design process is “consistent with the

holdings” of earlier cases, including Kieselstein-Cord

v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir.

1980), and Carol Barnhart Inc. v. Economy Cover

Corp., 773 F.2d 411 (2d Cir. 1985)). Other circuits

‘© If “academic approaches that have not been adopted by any

federal appellate courts” (Pet. 23) justified certiorari review,

this Court’s workload would be unmanageable.

have likewise “[s|]ynthesiz[ed]” case law on separabil-

ity from other circuits without suggesting the deci-

sions apply conflicting tests. Universal Furniture

Intl, Inc. v. Collezione Europa USA, Inc., 618 F.3d

417, 434 (4th Cir. 2010) (per curiam).

2. The Sixth Circuit used a similarly inclusive

approach here. Contrary to petitioner's assertion

(Pet. 17, 23) the Sixth Circuit did not “reject{]” all

preexisting tests. Instead, the court noted that other

circuits “have used multiple ... approaches in the

same case when analyzing whether the ‘pictorial,

graphic, or sculptural features” are separable from

the utilitarian aspects of a useful article. Pet. App.

33a (quoting 17 U.S.C. § 101). And noting that “it is

difficult to select one approach” for all fact-patterns,

the Sixth Circuit followed these circuits in applying a

“similar hybrid approach.” Jd. at 37a. Thus, the

Sixth Circuit expressly built several existing “tests”

into its analysis. See id. at 40a (embracing aspects of

the “objectively necessary approach” and the “design-

process approach,” as well as the Copyright Office's

“side by side” approach).

Petitioner previously endorsed such an ecumenical

approach to separability, explaining that “[a] single

one-size-fits-all separability test . is neither possi-

ble nor desirable.” Pet. C.A. Br. 29. Even now, peti-

tioner finds “much to commend” in a combination of

several tests, and never specifies just what it thinks

the right test would be (or why it would prevail).

Pet. 26. Thus, aside from petitioner's odd criticism of

the Sixth Circuit for hewing too closely to the Copy-

right Act’s definitions (Pet. 24), it is not clear what

disagreement petitioner has with the Sixth Circuit's

methodology. Instead, petitioner simply disagrees

with how the court applied the text of the statute to

the facts of this case.

To be sure, the Sixth Circuit declined to apply the

“likelihood-of-marketability” test that the Fifth Cir-

cuit used in Galiano. Pet. App. 41a.'! But the Sixth

Circuit’s rejection of this much-criticized approach!”

does not conflict with Fifth Circuit precedent be-

cause, as discussed above, pp. 14-15, supra, the Gali-

ano court limited application of the test to “garment

design only’—a category the court expressly distin-

guished from “fabric design.” 416 F.3d at 419-22.)

Because the Sixth Circuit understood that Varsity’s

50a), there is no conflict.

3. This case is a poor vehicle for the Court to

provide any general guidance on the test for separa-

bility. Two-dimensional graphic designs like Varsi-

'' The Sixth Circuit also indicated that it did not “endorse look-

ing at why the designer chose the ultimate design as the final

expression of the result she was trying to achieve to the exclu-

sion of other evidence.” Pet. App. 40a-41a. Neither the Seventh

Cireuit in Pivot Point nor any other circuit applying the “de-

sign-process” approach has held that the designer's motivation

is the only evidence courts may consider. There is accordingly

no conflict.

'2 See, e.g., 2 Patry on Copyright § 3:143, at 3-423 (describing

the likelihood-of-marketability approach as “discredited” and

“the worst possible solution” to determining separability).

'3 Petitioner briefly references (Pet. 28) the Ninth Circuit's deci-

sion in Poe v. Missing Persons, 745 F.2d 1238 (1984). Like Gal-

iano, Poe addressed the design of a garment (a swimsuit) rather

than a pattern design. See id. at 1239. Moreover, the court did

not establish a t«ct for separability, as subsequent Ninth Cir-

cuit case law makes clear. See Inhale, Inc. v. Starbuzz Tobacco,

Inc., 755 F.3d 1038, 1040-41 (9th Cir.), cert. denied, 135 S. Ct.

758 (2014).

ty’s do not raise any of the line-drawing difficulties

that sometimes exist in cases involving three-

dimensional designs; indeed, under the statutory

text, separability analysis should not even apply to

Varsity’s graphic designs.

The Sixth Circuit’s decision proceeded from the as-

sumption that the copyrightability of Varsity's

graphic designs turned on separability analysis. Pet.

App. 42a. But in order for this Court to provide any

guidance to lower courts on separability, the Court

would first have to determine that Varsity’s designs

are “of a useful article” under 17 U.S.C. § 101. In

fact, two-dimensional graphic designs like Varsity’s

are not themselves “design{s] of [a] useful article”; ra-

ther, they can be “applied to” useful articles such as

clothing, rugs, or other objects. 2 Patry on Copyright

§ 3:150, at 3-453-3-454. “Accordingly, use of the sep-

arability test is inappropriate.” Ibid.

Even assuming separability analysis is relevant,

this petition does not provide an opportunity for the

Court to “clarifly]. . the law of separability.” Pet.

41. The hard separability cases—and most of the

cases that petitioner cites—involve designs of three-

dimensional objects that hav both functional and

decorative features. See, ey., Universal Furniture,

618 F.3d at 424-25 (furniture collections); Pivot

Point, 372 F.3d at 915-16 (human mannequin head);

Brandir, 834 F.2d at 1143 (bicycle rack); Carol

Barnhart, 773 F.2d at 412 (human mannequin); Kie-

selstein-Cord, 632 F.2d at 990-91 (belt buckle). Con-

firming the point, petitioner’s amici specifically seek

guidance about the copyrightability of “3D” “mixed-

use objects” that can be reproduced with 3D printing.

Formlabs Amicus Br. 9-11.

By contrast, courts and commentators have recog-

nized that “it is relatively easy to obtain copyright

protection for designs of useful articles appearing in

two-dimensional rather than three-dimensional

form.” 1 Goldstein on Copyright § 2.5.3, at 2:83 (3d.

ed. 2005); see also Home Legend, LLC v. Mannington

Mills, Inc., 784 F.3d 1404, 1413 (11th Cir.), cert. de-

nied, 136 S. Ct. 232 (2015) (explaining that it is “ob-

viously true” that “any two-dimensional image” is

conceptually separable from the object on which it is

appears). Moreover, as discussed at length above,

pp. 1-2, 12-17, supra, it is well established in the

clothing industry that fabric designs are eligible for

e.g., Knitwaves, Inc., 71 F.3d at 1002 (graphic de-

signs on sweaters are copyrightable); see generally |

Nimmer on Copyright § 2.08[H], at 2-143 to 2-149.

Varsity registered its copyrights in_ two-

dimensional designs that the Sixth Circuit properly

characterized as being “like fabric design{s].” Pet.

App. 4a, 50a. The designs would be copyright-

eligible as graphic works in any circuit and under

any plausible test for separability (assuming separa-

bility doctrine applies). Reviewing this fact-pattern

would not provide lower courts with the guidance

that petitioner claims they need to resolve other,

harder cases.

Il. The Sixth Circuit’s Decision That The

Should Receive Skidmore Deference

Does Not Warrant Review

The Sixth Circuit determined that the Copyright

Office’s decisions to register Varsity’s numerous

graphic designs should receive a measure of defer-

ence under Skidmore. That conclusion does not war-

rant review. Petitioner has not identified any circuit

conflict, and there is no basis to conclude that appli-

cation of this minimal level of deference determined

the outcome below.

1. The Sixth Circuit did not create any circuit

conflict by applying Skidmore deference (but no

more) to the Copyright Office’s set of decisions regis-

tering Varsity’s designs. To the contrary, the circuits

agree on the relevant principles, and no circuit has

adopted petitioner’s position denying any deference.

Thus, contrary to petitioner’s claim, the Sixth Cir-

cuit’s application of Skidmore deference was hardly

“unprecedented.” Pet. 34.

As the Sixth Circuit noted (Pet. App. 17a-19a), sev-

eral courts of appeals have recognized that the Copy-

right Office’s interpretations of the Copyright Act

should, at a minimum, receive Skidmore deference.

See, e.g., Southco, Inc. v. Kanebridge Corp., 390 F.3d

276, 286 n.5 (3d Cir. 2004) (en banc) (Alito, J.) (defer-

ring to the Office’s “longstanding practice” not to reg-

ister short phrases, and explaining that “[a]t a min-

imum, the practice of the Copyright Office reflects a

body of experience and informed judgment to which

courts . . may properly resort for guidance”). Par-

ticularly relevant here, courts have deferred to the

signs of useful articles, e.g., Inhale, Inc. v. Starbuzz,

755 F.3d 1038, 1042 (9th Cir.), cert. denied, 135 S.

Ct. 758 (2014), including to individual registration

decisions concerning where to draw the line between

“copyrightable works of art and noncopyrightable in-

dustrial designs,” Norris Indus., Inc. v. Intl Tel &

Tel. Corp., 696 F.2d 918, 922 (11th Cir. 1983).

Petitioner asserts (Pet. 35-36) that each of the cir-

cuit decisions applying Skidmore deference is some-

how distinguishable, but that is hardly an argument

for certiorari. Petitioner does not identify any deci-

sion in which courts have refused to apply Skidmore

deference to copyright registrations. The closest pe-

titioner comes is its reference to a three-decades-old

Second Circuit opinion, Carol Barnhart. But the

Second Circuit’s decision did not even mention

Skidmore deference, much less reject the doctrine’s

application—which is unsurprising given the state of

agency-deference law in 1985. Rather, the Second

Circuit merely indicated that it was “permissible for

the district court itself to consider how the copyright

law applies to the articles under consideration,” and

to reject the “mute testimony” of the Copyright Of-

fice’s registration approval. 773 F.2d at 414 (empha-

sis added). The court’s holding and reasoning are

consistent with the premises behind Skidmore defer-

ence, because the doctrine provides that agency in-

terpretations are “entitled to respect” only “in pro-

portion to their power to persuade.” Wos vu. E.M.A. ex

rel. Johnson, 133 S. Ct. 1391, 1402 (2013) (quotation

marks omitted). An isolated and “mute” registration

decision may lack significant persuasive value.

In contrast to Carol Barnhart, the Copyright Office

was not “mute” here. As the Sixth Circuit recounted,

the Office discussed the basis for approving similar

Varsity graphic designs for registration in several

letters, in which the Office “grounded its decisions to

using sound legal reasoning.” Pet. App. 22a. The

signs only after reconsidering prior denial decisions

that were challenged by Varsity. Pet. 13-14. Given

this context and the evidence of the Copyright Of-

fice’s careful deliberation, the Sixth Circuit reasona-

bly concluded that the registration decisions had

some persuasive value. Even on the dubious as-

sumption that the Second Circuit would today treat

Carol Barnhart as a precedent requiring no Skid-

more deference to a single “mute” agency decision,

that position is entirely consistent with the Sixth

Circuit’s decision. The flexible Skidmore framework

properly takes account of different evidence of agen-

cy deliberation and consistency. When that evidence

differs, the outcome may as well.'4

As for petitioner’s attempt to distinguish the nu-

merous other circuit decisions applying Skidmore

deference, the lines petitioner draws do not with-

stand scrutiny. For example, petitioner acknowledg-

es that courts have deferred “to the Copyright Of-

fice’s decision to deny a registration,” Pet. 35 (em-

phasis added), yet petitioner claims that decisions to

approve a registration are categorically ineligible for

deference. Petitioner does not identify any precedent

'4 Petitioner points (Pet. 37) to the Copyright Office’s policy of

erring on the side of registration in borderline cases. But as

noted, the Copyright Office did not register Varsity’s designs

pursuant to this “Rule of Doubt” policy. See pp.7-8, supra. In

any event, such a policy does not suggest that Skidmore defer-

ence is categorically inapplicable to registration decisions. To

the extent petitioner argues that Varsity’s reference to this doc-

trine in one of its reconsideration letters to the Copyright Office

concerning designs not at issue in this case makes deference in-

appropriate here, its fact-bound assertion does not warrant re-

view.

from any court that supports (much less requires)

making deference a one-way ratchet by giving weight

to an agency’s expertise when it says “no” but disre-

garding the same agency’s reasoning when it says

“yes.” Petitioner also contends that most (though not-

all) of the out-of-circuit decisions relied on by the

Sixth Circuit involved deference to the Copyright Of-

fice as a whole, not to the decision of “a single regis-

tration specialist.” Ibid. That is not a basis for dis-

tinction, however, because the Sixth Circuit likewise

looked beyond the registration decisions at issue, ex-

plaining that “the record suggests that the Copyright

Office consistently applied the same interpretation of

separability to Varsity’s numerous designs like the

ones at issue in this case.” Pet. App. 21a.

2. Unable to identify a circuit split, petitioner ar-

gues the merits and contends (Pet. 34) that the Sixth

Circuit’s decision to apply Skidmore deference is in-

consistent with the burden-shifting framework estab-

lished by 17 U.S.C. § 410(c). Section 410(c) provides

that proof of registration before or within five years

of the first publication of a work “shall constitute

prima facie evidence of the validity of the copyright.”

Ibid. Petitioner asserts that the shift in the burden

of proof accomplished by this provision already pro-

vides deference to the Copyright Office’s registration

decision, and petitioner argues that the statute

therefore must implicitly bar courts from granting

any additional deference to registration decisions

under Skidmore.

Petitioner's contention is not only splitless, but also

meritless. As an initial matter, it is not clear how

and whether section 410(c)’s burden allocation even

applies to questions of statutory interpretation that

are the subject of Skidmore deference. Cf. Microsoft

Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2253 (2011)

(Breyer, J., concurring) (indicating that the “clear

and convincing” evidentiary standard applicable to

patent validity controls only the factual—not the le-

gal—aspects of validity disputes in patent infringe-

ment cases). But even assuming section 410(c)’s

burden-shifting framework is relevant to questions of

legal interpretation, nothing in the statute suggests

that courts must give equal weight to unexplained

registrations and registrations that are supported by

well-reasoned written explanations from the Copy-

right Office. See Masquerade Novelty, Inc. v. Unique

Indus., Inc., 912 F.2d 663, 669 n.7 (3d Cir. 1990)

(stating that deference under section 410(c) is limited

to burden-shifting “[a]bsent an indication from the

or the existence of a controlling administrative regu-

lation or interpretation” (emphasis added)). When,

as here, the court concludes the Office’s decision is

well explained and persuasive, Pet. App. 22a, it is

consistent with section 410(c) and with basic admin-

istrative-law principles for the court to grant at least

the minimal level of deference that the Skidmore

doctrine recognizes.

Petitioner’s contrary approach would produce odd

results. Petitioner would rule out Skidmore defer-

ence to any registration statements that satisfy sec-

tion 410(c)’s criteria to constitute prima facie evi-

dence of validity, but its theory would allow for def-

erence to similar registrations from other cases be-

cause they are not specifically addressed by the stat-

ute. Petitioner provides no reason to believe that

Congress intended to bar deference to copyright reg-

istrations in the cases they are challenged, even

though courts may rely on the persuasive value of

the very same registrations in separate litigation.

Underscoring the weakness of its position, petition-

er strays well beyond the question presented about

whether Skidmore deference applies and devotes sev-

eral paragraphs to criticizing how the Sixth Circuit

understood the Copyright Office’s policy in this case.

See Pet. 37-38 (accusing the majority of “selective

deference”). The fact-bound question whether the

Sixth Circuit correctly applied Skidmore deference in

this case does not merit review.

Petitioner's survey of Copyright Office policy is also

flawed. Once again, petitioner conflates policies con-

cerning garment designs with the two-dimensional

graphic designs at issue here. As the very sources

petitioner references make clear, the Copyright Of-

fice views the latter category of designs as copyright-

able. See, e.g., Registrability of Costume Designs, 56

Fed. Reg. 56,530-32 (Nov. 5, 1991) (describing a

“general policy of nonregistrability of garment de-

signs,” while explaining that “[a] two-dimensional

design applied to the surface of . clothing may be

registered” (emphasis added)). In fact, the Copyright

Office has expressly stated that “[a]lthough the copy-

right law does not protect the shape or design of

clothing, . . . designs imprinted in or on fabric are

considered conceptually separable from the utilitari-

an aspects of garments.” Compendium III of Copy-

right Office Practices § 924.3(A)(1), at 900-42. Peti-

tioner’s suggestion that the Sixth Circuit misunder-

stood Copyright Office policy is baseless. '®

‘6 Contrary to petitioner’s claim (Pet. 37), the Sixth Circuit's

inquiry into whether an observer could imagine a cheerleading

3. Review of this question is also not warranted

because it was not outcome-determinative here. The

panel majority did not invoke Skidmore deference in

its discussion of separability or give any indication

that it was placing a thumb on the scale in favor of

copyrightability based on the registration decision.

Instead, the court thoroughly examined the statutory

text, legislative history, case law, and academic

commentary to decide whether Varity’s two-

dimensional graphic designs were copyrightable.

See Pet. App. 22a-50a. If administrative deference

were doing real work in the court’s analysis, the

Sixth Circuit could have written a much shorter

opinion on the merits. The Sixth Circuit’s discussion

of deference served largely to reject the application of

greater deference, such as that available under

Chevron. Id. at 16a-21a.

The low stakes involved in this issue are confirmed

by the dissent, which accepted the majority’s applica-

tion of Skidmore deference. See Pet. App. 56a. The

fact that judges on the panel agreed about this issue

yet divided on the merits strongly suggests that the

Skidmore label did not affect the outcome.

uniform without the registered graphic designs (Pet. App. 45a-

46a) is consistent with the Copyright Office’s policy. See Com-

pendium III of Copyright Office Practices § 924.2(B), at 900-40

(explaining that the separability inquiry asks, inter alia,

whether an artistic feature could be “imagined separately and

independently from the useful article without destroying the

basic shape of that article”).

Ill. The Interlocutory Petition Is A Poor Ve-

hicle For Review

The interlocutory posture of this case makes the

petition a poor vehicle to review either question pre-

sented. The Court generally reviews final judg-

ments, rather than interlocutory decisions. See

S. Shapiro et al., SUPREME COURT PRACTICE 250

(10th ed. 2013); see also Mt. Soledad Mem? Ass'n v.

Trunk, 132 S. Ct. 2535, 2536 (2012) (statement of

Alito, J., respecting denial of certiorari) (certiorari

was properly denied “[b]ecause no final judgment has

been rendered”); Va. Military Inst. v. United States,

508 U.S. 946 (1993) (opinion of Scalia, J., respecting

the denial of certiorari) (“We generally await final

judgment in the lower courts before exercising our

certiorari jurisdiction.”). By doing so, the Court en-

sures that the record is adequately developed and

conserves judicial resources by limiting review to is-

sues that are potentially outeome-determinative in

the litigation.

In this case, the lower courts have not yet resolved

whether petitioner infringed Varsity’s copyrights. In

particular, petitioner has argued that Varsity’s in-

fringement claims has relied on design elements that

are not original. Pet. App. 12a. This argument is an

independent defense to infringement, and while Var-

sity has explained to the lower courts why petition-

er’s argument lacks merit, petitioner can and evi-

dently will pursue it on remand. See Pet. App. 50a.

If the lower courts ultimately were to accept peti-

tioner’s argument or conclude that petitioner was not

liable for infringement for some other reason, there

would be no need for this Court to decide the ques-

tions presented here.

xe eke &

The Sixth Circuit reached two unremarkable con-

clusions in this case: that Varsity’s two-dimensional

graphic designs are eligible for copyright because

they are “like fabric design[s}” (Pet. App. 50a), that

are easily separable from cheerleading uniforms and

other clothing; and that the Copyright Office’s con-

sistent, and well-reasoned registration decisions

were entitled to some deference under Skidmore, but

not Chevron deference. Neither holding creates a

circuit split. And neither issue warrants this Court’s

review, particularly before final judgment.

CONCLUSION

The petition for a writ of certiorari should be

denied.

Respectfully sutm itted.

GRADY M. GARRISON

ADAM S. BALDRIDGE

BAKER, DONELSON,

BEARMAN, CALDWELL &

BERKOWITZ P.C.

165 Madison Ave.,

Suite 2000

Memphis, TN 38103

THOMAS K.JELLBERG

J. CHRISTOPHER JENSEN

COWAN, LIEBOWITZ &

LATMAN, P.C.

1133 Ave. of the Americas

New York, NY 10036

March 4, 2016

WILLIAM M. JAY

Counsel of Record

BRIAN T. BURGESS

GOODWIN PROCTER LLP

901 New York Ave., N.W.

Washington, DC 20001

wjay@goodwinprocter.com

(202) 346-4000

ROBERT D. CARROLL

CHRISTINE DIETER

GOODWIN PROCTER LLP

Exchange Place

Boston, MA 02109

Counsel for Respondents

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.