Notre Dame Law Review Symposium, Keynote Address – Honorable David W. McKeague, Sixth Circuit Court of Appeals

Dissenter in Varsity
.  Case touches on boundary
issues that are our subject. Perspective of a judge.  Apparel industry is huge; could also affect
robotics, 3D printing, digital video.  We
don’t know what they might do/how broad the scope of the case will be.  Five graphic designs in which VB registered a
©.  Printed out the design on fabric,
then cut and sewed.
The designs are very much cheerleading uniforms: you don’t
need specific information about them to recognize that.  Mazer
v. Stein
: can’t use sculpture w/o fear of © liability for lamp if sculpture
is capable of separate/independent existence.
Here, the stripes are graphic and the question is whether
you can prevent someone from using a uniform with those designs on them.  What is the intrinsic utilitarian function of
a cheerleader outfit?  Should we include
or exclude the information conveyed by the outfit as part of its utilitarian
function?  Some commentators even
question the order of the questions we should ask.  At least nine different tests for
functionality, almost all of which are outcome-determinative.  These various attempts differ
substantially—twisting themselves into knots. 
Basic question: can the utilitarian be separated from the aesthetic?
Copyright cases are rare in fed cts. You have to educate us;
don’t assume that we know the rules.  Dct
said that the stripes made the garment recognizable as a cheerleading uniform;
merged with the function.
Lots of cases.  Belt
buckle: separable.  Mannequin face with a
“hungry” look: separable, though earlier mannequins not.  Prom dress sequins, crystals, ruched satin, tulle
netting: not conceptually separable from prom dress itself.  If you can find a pattern, you’re ahead of
us. The majority in the court of appeals for Varsity Brands came up with a 10th test.  Combination of objectively necessary/design
process tests.  Reversed district court
& found separability.
Majority opinion is thoughtful & scholarly, but not
practical.  Majority defined the function
of a cheerleading uniform broadly: to cover the body, wick away moisture,
withstand the vigor of athletic movements. 
He thinks there are other functions in which the decorative design
merges with the actual functional design and shouldn’t be protectable by
copyright. Purpose or function of clothing is not merely to look good, but to
look good on the wearer and to make the wearer look better.   “Does this make me look fat?” is a question
about function.
J. Breyer seemed responsive: he said, the clothes on the
hanger do nothing, and the clothes on the woman do everything; that’s what
fashion is about.  J. Kagan said: that’s
so romantic. 
Majority said that identifying function wasn’t important,
but it seems to him that informational/identifying function can be considered
once we agree that the article is a utilitarian one.  Star put more emphasis on the appearance of
the wearer created by the design than on the identification function.  Majority also rejected argument that design
was inextricably intertwined with the utility. 
They thought that would render nearly all artwork unprotectable. He
thinks that went too far. Under his argument, only artwork integral to the
functions of the uniform/other article would be unprotectable.  He didn’t need to frame a test, since he was
in the dissent; pragmatic approach of the district court.
Separability isn’t just physical. You can attach a design
element in a way that makes it physically separable, but oftentimes separation
would destroy the useful article; that doesn’t mean there’s no separability for
© purposes; just may be conceptual separability.  Still have fundamental Q: how do we determine
if something is clearly recognizable as a separate graphic work. If © can
prevent manufacture of clothing, there’d be millions of © on clothing,
thousands of lawsuits in fashion industry. 
We don’t see that; before Varsity, nobody really thought that something
like this would be protectable.
We don’t know how many © there are in garments, b/c of the
way the CO categorizes: by type, as selected by registrant. Varsity said
“visual materials or 2D artwork.” 
Boundary problems: most of the fashion industry relies on TM
to protect logos etc., not © to begin with. There is an increase in © lawsuits,
but mostly fabric design. Varsity started to argue that this was a fabric
design case. 
His dissent, identifying the doctrinal confusion as a
“mess,” was in part a signal to the Court that this was certworthy, given the
confusion in the  lower courts. Reached
mainstream press, blogs, ultimately clerks and Justices; thinks that happened
in this particular case.
Notable in the oral argument: no reference to any of the
existing tests in the lower courts, though there was reference to tests in the
amicus brief submitted by Lemley, McKenna, Sprigman, Tushnet, Samuelson et al.  They will formulate a test to achieve the
result they are interested in w/r/t fashion industry in general.  There were at least 15 disputes b/t the
amicus briefs despite the limited QP; only one of these disputes came up in the
oral argument, so there’s a lot left to fight about no matter what.  E.g., Star sought cert on the amount of
deference owed to the CO’s determination of copyrightability under
Chevron/Skidmore.  6th Circuit
said, correctly, no Chevron deference, but majority granted Skidmore deference,
which was much more problematic—the fact they granted an application shouldn’t
be entitled to that deference, he thinks, even if their interpretation of the
statute should be.
Difference in court of appeals: appeal is as of right; we
don’t control the lawyers’ arguments, and sometimes they are ill-advised and we
are interested in something different. 
SCt has more control.  He thought
interesting line of questions dealt with in Buccafusco/Fromer amicus: camouflage
as functional design applied to clothing. 
Fashion Law Institute argued that camo can be wholly aesthetic—a
military-inspired fashion statement.  [I
used to wear cassette tapes as earrings—hey, it was the 1980s—and I think that
was a fashion statement but that didn’t make cassette tapes have a separable
copyrightable shape.]  Justices were
using camo question almost as a litmus test: if a test didn’t exclude camo in
the forest, that test was probably wrong. 
Justices also looked at images in various briefs.  Justices rarely turn to pages of brief to
read quotes when asked to do so, but they did refer to pages with images during
the argument.
What about Duchamp’s shovel attached to a wall: “Prelude to
a Broken Arm”?  What about a dress with a
Mondrian pattern on it?  What about old
all-white cheerleader uniforms?  J.
Roberts dismissed that as old-fashioned. 
One argument: if you take the claimed features off, you don’t have a
cheerleader uniform, but you have a little black dress. 
Jane Ginsburg’s argument: no need to define separability b/c
this is just a question of applying a 2D design to an object.
Samuelson: thinks they’re going to reverse; they were caught
up with the camo metaphor. Once a fabric design can be functional, then you have to look at the effects of other
Lemley: Other IP cases from the Court: tried very hard not
to adopt a test, just to say that there are factors to consider in each case.
Fact that there was no discussion of the existing tests in the lower courts was
McKenna: many people fear this lack of clear resolution will
just deepen the confusion; Court could help by picking a test, regardless of
which test they picked.
Judge McKeague: I don’t want this to come back to us.

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