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Full Opinion
MOORE, J., delivered the opinion of the court in which GUY, J., joined. McKEAGUE, J. (pp. 494-97), delivered a separate dissenting opinion.
OPINION
Are cheerleading uniforms truly cheer-leading uniforms without the stripes, chevrons, zigzags, and color blocks? That is the question that strikes at the heart of this appeal. Plaintiffs-Appellants Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc. (collectively “Varsity”) have registered •copyrights for multiple graphic designs that appear on the cheerleading uniforms and warm-ups they sell. Defendant-Appellee Star Athletica, LLC, also sells cheerleading gear bearing graphic designs that, according to Varsity, are substantially similar to the designs for which Varsity has valid copyrights. Star asserts that Varsity’s copyrights are invalid because the designs at issue are unprotectable “design[s] of ... useful article[s].” 17 U.S.C. § 101 (2012). The district court concluded that a cheerleading uniform is not a cheer-leading uniform without stripes, chevrons,
For the reasons we now ■ explain, we REVERSE the district court’s judgment and enter partial summary judgment for Varsity with respect to whether Varsity’s designs are copyrightable pictorial, graphic, or sculptural works, and REMAND the case for further proceedings consistent with this opinion.
I. BACKGROUND
Varsity designs and manufactures apparel and accessories for use in cheerleading and other athletic activities. R. 170 at 1 (Joint Statement of Undisputed Facts (“JSUF”) ¶ 1) (Page ID # 2228). It employs designers who sketch design concepts consisting of “original combinations, positionings, and arrangements of elements which include V’s (chevrons), lines, curves, stripes, angles, diagonals, inverted V’s, coloring, and shapes____” R. 173 at 2-3, 6 (Pis.’ Statement of Undisputed Facts (“PSUF”) ¶¶ 1, 4, 21) (Page ID # 2385-86, 2389); R. 173-2 at 4-5 (Williams Deck ¶ 8) (Page ID # 2439-40). When creating these designs, the designers do not consider functionality of the uniform or the ease of producing a full-sized uniform that looks like the sketch. R. 173 at 2-3, 6 (PSUF ¶¶ 4-5, 21) (Page ID #2385-86, 2389); R. 173-2 at 4-5 (Williams Deck ¶ 8) (Page ID #2439-40). After a designer completes a sketch, Varsity decides whether to implement that design concept for cheerleading or other uniforms, or whether to abandon the design concept altogether. R. 173 at 4 (PSUF ¶¶ 11-12) (Page ID # 2387). Once Varsity selects a design for production, the production crew re-creates the design using one of four methods to create a cheerleading uniform: “cutting and sewing panels of fabric and braid together”; sublimation;
Varsity sought and received copyright registration for “two-dimensional artwork” for many of its designs, including the following designs, which are the subject of this lawsuit:
i
Design 074
Registration No. VA 1-411-535
R. 1-15 at 2 (Compl. Ex. 15) (Page ID #48); R. 1-16 at 2-3 (Compl. Ex. 16) (Page ID # 51-52); R. 1-17 at 2 (Compl. Ex. 17) (Page ID #54); R. 1-18 at 2 (Compl. Ex. 18) (Page ID # 57); R. 51-1 at 2 (1st Am. Compl. Ex. 9) (Page ID # 536).
Star markets and sells uniforms and accessories for football, baseball, basketball, lacrosse, and cheerleading. R. 170 at 2 (JSUF ¶ 5) (Page ID #2229). Varsity filed this lawsuit after seeing Star’s marketing materials and noticing that Star was advertising cheerleading uniforms that looked a lot like Varsity’s five registered designs. See R. 1 at 3-4, 6-10 (Compl.1Hf 13-15, 27-53) (Page ID #3-4, 6-10). Varsity alleges five claims of copy
At the close of the discovery period, both parties filed motions for summary judgment. Star argued that it was entitled to summary judgment on all of Varsity’s claims. With respect to Varsity’s copyright-infringement claims, Star argued that Varsity does not have a valid copyright in the five designs for two reasons: (1) Varsity’s designs are for useful articles, which are not copyrightable; and (2) the pictorial, graphic, or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms, making the designs ineligible for copyright protection. R. 168 at 2 (Def.’s Mot. for Summ. J.) (Page ID #2121). Varsity asserted a right to summary judgment, as well, arguing that its copyrights were valid because the designs were separable and non-functional, and that Star infringed those valid copyrights. R. 172 at 1-2 (Pis.’ Mot. for Summ. J.) (Page ID # 2300-01). Varsity also sought dismissal of Star’s counterclaims. Id. In response to Varsity’s • motion for summary judgment, Star primarily focused on whether Varsity’s designs were unprotéctable useful articles, see R. 176-2 at 8-13 (Def.’s Combined Mem. of Law in Opp’n to Pi’s Mot. for Summ. J. and Reply in Supp. of Def.’s Mot. for Summ. J.) (Page ID # 3282-87), but also argued that Varsity had not met its obligation “to prove which ‘key elements’ of its designs are original,” id. at 14 (Page ID # 3288). Varsity- responded in its sur-reply to Star’s claim that Varsity’s designs were unoriginal. See R. 177 at 10-11 (Pl.’s Sur-Reply in Supp. of Mot. for Summ. J.) (Page ID # 3371-72).
The district court entered summary judgment in Star’s favor on the copyright claims, concluding that Varsity’s designs were not copyrightable because the graphic elements of Varsity’s designs are not physically or conceptually separable from the utilitarian function of a cheerleading uniform because the “colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular” make the garment they appear on “recognizable as a cheerleading uniform.” R. 199 at 15 (D. Ct. Op. & Order Re Mot. for Summ. J.) (Page ID # 4309). In other words, the district court held that the aesthetic features of a cheer-leading uniform merge with the functional purpose of the uniform. The district court did not address whether Varsity’s designs were unoriginal, and therefore unprotectable. Without addressing the merits of the state-law claims, the district court dismissed them without prejudice on the basis that it had resolved all of Varsity’s federal claims and declined to exercise supplemental jurisdiction. Id. at 17-18
This appeal followed. Varsity challenges the district court’s entry of summary judgment on the issue of copyright infringement and dismissal of the state-law claims. Appellant Br. at 16-18. Because Varsity seeks a' remand to the district court for further proceedings, it asks that we address the district court’s ruling permitting Star’s experts to testify about whether Varsity’s designs are copyrightable, non-useful designs. Id. at 18.
II. COPYRIGHT INFRINGEMENT
We review the district court’s grant of summary judgment de novo. Jones v. Blige, 558 F.3d 485, 490 (6th Cir.2009). When reviewing an entry of summary judgment, we view the record in the light most favorable to, and draw all reasonable inferences in favor of, the non-moving party. Id. The moving party is entitled to summary judgment if “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a).
Varsity has alleged that Star infringed its valid copyrights. To prevail, Varsity must show that (1) it owned a valid copyright in the designs, and (2) that Star “copied protectable elements of the work.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522, 534 (6th Cir. 2004). We have said that “[t]he first prong tests the originality and non-functionality of the work,” id., but there are actually five elements to establish the validity of a copyright:
(1) originality in the author; (2) copyrightability of the subject matter; (3) a national point of attachment of the work, such as to permit a claim of copyright; (4) compliance with applicable statutory formalities; and (5) (if the plaintiff is not the author) a transfer of rights or other' relationship between the author and the plaintiff so as tó constitute the plaintiff as the valid copyright claimant.
4 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01[A] (2003) (footnotes omitted). We have also said, “[t]he second prong tests whether any copying occurred (a factual matter) and whether the portions of the work copied were entitled to copyright protection (a legal matter).” Lexmark, 387 F.3d at 534. This means that “a court should first identify and eliminate those elements that are unoriginal [or not copyrightable] and therefore unprotected” “before comparing similarities between” the plaintiffs and defendant’s works. Kohus v. Mariol, 328 F.3d 848, 853 (6th Cir.2003). If the elements of the work that the defendant copied as a factual matter were not copyrightable — that is, non-original or ineligible for copyright protection — then the . plaintiff cannot establish that the defendant has infringed the copyright. See 4 Nimmer On Copyright § 13.01[A]. The only element of the validity of Varsity’s copyright that is at issue in this appeal is whether Varsity’s designs are protectable subject matter under the Copyright Act. See Appellant Br. at 1-2, 16-18; Appellee Br. at 3, 20-22. The parties do not address the originality of the designs, and therefore we do not address that issue now.
Varsity challenges the district court’s entry of summary judgment with respect to the copyright claims on three grounds. First, Varsity argues that the district court did not afford appropriate deference to the Copyright Office’s determination of eopyrightability. Second, Varsity contends that the district court used the wrong approach to determine whether a design is a
A. Copyright Registration and the Presumption of Validity
Varsity has successfully registered all five of the designs at issue with the Copyright Office. Congress has bestowed upon those who have obtained copyright registration “made before or within five years after first publication of the work” a presumption of validity “[i]n any judicial proceeding!] ].” 17 U.S.C. § 410(c) (2012). A certificate of registration “constitute^] prima facie evidence of the validity of the copyright and of the facts stated in the certificate.” Id. That presumption is rebuttable; once the plaintiff introduces evidence that he registered the work “before or within five years after first publication,” id., then the burden shifts to the alleged infringer to present evidence that the plaintiffs copyrights are invalid, Hi-Tech Video Prods., Inc. v. Capital Cities/ABC, Inc., 58 F.3d 1093, 1095 (6th Cir.1995). “The evidentiary weight to be accorded the certificate of a registration made” more than “five years after first publication of the work” “shall be within the discretion of the court.” 17 U.S.C. § 410(c).
Three of Varsity’s designs were registered within five years after first publication, Appellant Br. at 21, and therefore Star “shoulders the burden of rebutting the presumptive validity of [those three] copyrights],” Lexmark, 387 F.3d at 534. Varsity registered the other two designs five years and six months and six years and four months after first publication, Appellant Br. at 22, and so we have discretion to view the registrations for these two designs as evidence of validity if we wish. The district court acknowledged the statutory presumption afforded the three designs, but treated the presumption as ‘“fairly easy to rebut because the Copyright Office tends toward cursory issuance of registrations.’ ” R. 199 at 6 n.2 (D. Ct. Op. & Order) (Page ID # 4300) (quoting Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 430 (4th Cir.2010)). Varsity takes umbrage with the district court’s treatment of its presumption of validity and argues that courts should give deference to the Copyright Office’s determinations about the originality and separability of Varsity’s designs under Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837, 104 S.Ct. 2778, 81 L.Ed.2d 694 (1984), or Skidmore v. Swift & Co., 323 U.S. 134, 65 S.Ct. 161, 89 L.Ed. 124 (1944). Appellant Br. at 25-26. What deference must we give to the Copyright Office’s determination that Varsity’s designs are non-functional and separable from the “utilitarian aspects of the article” to which they are affixed: Chevron, Skidmore, or none?
Chevron deference is appropriate not only when “Congress ... ha[s] expressly delegated authority or responsibility to implement a particular provision or fill a particular gap.” ■ United States v. Mead Corp., 533 U.S. 218, 229, 121' S.Ct. 2164, 150 L.Ed.2d 292 (2001). We must also give “judicial [Chevron ] deference” to an agency’s “interpretive choices” when “the agency’s generally conferred authority and other statutory circumstances [make apparent] that Congress would expect the agency to be able to speak with the force of law when it addresses ambiguity in the statute or fills a space in the enacted law, even one about which ‘Congress did not actually have an intent’ as to a particular result.” Id. (quoting Chevron,
In some circumstances, however, when Congress has not expressly or impliedly delegated to an agency the power to promulgate rules with the power of law, courts need not give Chevron deference to the agency’s interpretation. Id. at 234, 121 S.Ct. 2164 (holding that tariff-classification ruling letters “are beyond the Chevron pale”). Nevertheless, agency interpretations of a statute deserve “respect proportional to [the interpretations’] ‘power to persuade,’ ” otherwise known as Skidmore deference, see id. at 235, 121 S.Ct. 2164, when the agency has “specialized experience and broader investigations and information available” than those available to the judiciary, id. at 234, 121 S.Ct. 2164 (internal quotation marks omitted).
We have, not resolved the level of deference courts must accord certifications of copyright registration, but our sibling circuits have shown some deference to the Copyright Office’s interpretations of the Copyright Act. The Second Circuit gives some deference to the Copyright Office’s Circular for Copyright Registration on Form, SE as an interpretation of whether copyright registration of serial publications serves as registration for the independently authored contributions that were published in the serial issue. See Morris v. Bus. Concepts, Inc., 283 F.3d 502, 505-06 (2d Cir.2002) (citing Mead Corp., 533 U.S. 218, 121 S.Ct. 2164) (“In this case, however, we find the Office’s interpretation persuasive.”). Sitting en banc, the Third Circuit has held that the Copyright Office’s “longstanding practice of denying registration to [a category of works] merits deference, but declined to label that deference “Skidmore deference.” Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 286 & n. 5 (3d Cir.2004) (en banc) (Alito, J.) (‘We do not decide what degree of deference is warranted under the circumstances. At a minimum the practice of the Copyright Office reflects a body of experience and informed judgment to which courts and litigants may properly resort for guidance.”) (internal quotation marks omitted). Noting that “ ‘[c]ourts have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article’s utilitarian function,’ ” the Ninth Circuit rejected Chevron deference for the Copyright Office’s Compendium and opinion letters, but held that Skid-more deference was appropriate. Inhale, Inc. v. Starbuzz Tobacco, Inc., 755 F.3d 1038, 1041-42 & n. 2 (9th Cir.2014) (quoting Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 670 (3d Cir.1990)) (also citing High Sierra Hikers Ass’n v. Blackwell, 390 F.3d 630, 638-39 (9th Cir. 2004)); see also Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673, 685 n. 52 (9th Cir.2014) (“Because the [copyright registration] forms created by the Copyright Office are statutorily authorized, it is possible that they qualify for the more deferential Chevron deference under Mead,” but not deciding the question because applying Skid-more deference was sufficient). Similarly, the Eleventh Circuit has held that courts should give “some deference” to the Copyright Office’s decision to deny an applica
We now hold that the Copyright Office’s determination that a design is protectable under the Copyright Act is entitled to Skidmore deference. Individual decisions about the copyrightability of works are not like “rules carrying the force of law,” which command Chevron deference. Mead, 533 U.S. at 226-27, 121 S.Ct. 2164. Like tariff-classification rulings, which the Supreme Court held are entitled to Skidmore — not Chevron — deference, id. at 235, 121 S.Ct. 2164, copyright registration is not “a product of such formal process,” id. at 235, 121 S.Ct. 2164, or the type of process that suggests that the Copyright Office is engaging in any sort of rulemaking when issuing certificates of registration. And, although the Copyright Office is “charged with applying [the Copyright Act],” and therefore “necessarily make[s] all sorts of interpretive choices,” id. at 227, 121 S.Ct. 2164, these choices are akin to tariff-ruling letters because they apply to individual applications and are conclusive only as to the application under review,
How much to defer to the determination to issue a copyright registration depends on “ ‘the thoroughness evident in [the agency’s] consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade, if lacking the power to control.’ ” Mead, 533 U.S. at 228, 121 S.Ct. 2164 (quoting Skid-more, 323 U.S. at 140, 65 S.Ct. 161). The Copyright Office unquestionably has experience identifying useful articles and pictorial, graphic, and sculptural works. The Copyright Office publishes an internal manual that instructs its employees who are tasked with reviewing and registering copyrights how to apply the relevant provisions of the Copyright Act uniformly. See Compendium of U.S. Copyright Office Practices”) §§ 903.1, 924-924.3(D) (3d ed.2014) [hereinafter Compendium III]. In addition, the evidence in 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, which Varsity successfully registered with the Copyright Office. See R. 173-6 (Carroll Deck Ex. A) (Page ID # 2541-2605). Comparison between the designs at issue in this case and the other Varsity registered designs confirms that the Copyright Office consistently found the arrangements of stripes, chevrons, and color-blocking to be original and separable from the utilitarian aspects of the articles on which they appear, and therefore copyrightable. Compare id, with Appellant Br. at 6-10. Not only do the letters demonstrate that the Copyright Office has interpreted the Copyright Act consistently, they also demonstrate that the Copyright Office has grounded its decisions to register Varsity’s designs in the text of the statute using sound legal reasoning. See R. 173-6 at 8, 13 (Carroll Decl. Ex. A) (Page ID #2548-49, 2553). Finally, the Copyright Office’s expertise in identifying and thinking about the difference between art and function surpasses ours. See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 994 (2d Cir.1980) (“The Copyright Office continually engages in the drawing of lines between that which may be and that which may not be copyrighted.”).
Thus, the district court erred by failing to give greater deference to the Copyright Office’s registration determinations. This is not to say that the presumption of validity is irrebuttable. It is not. Hi-Tech, 58 F.3d at 1095; Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980). Star must bear the burden to overcome the presumption. We turn now to address whether Star has done so here.
B. Useful Articles and Separable Designs
As an initial matter, we note that courts are divided about whether copyrightability is a question of law or fact. Oracle Am., Inc. v. Google Inc., 750 F.3d 1339, 1353 n. 3 (Fed.Cir.2014) (noting circuit split); Caiman v. McFarlane, 360 F.3d 644, 648-49 (7th Cir.2004) (same). We need not resolve this question here. Although there may be cases where “[t]he determination whether a [work] is. a pictorial, graphic, or sculptural work, and not an uncopyrightable ‘useful article’ is a fact-intensive one,” Lanard Toys Ltd. v. Novelty, Inc., 375 Fed.Appx. 705, 710 (9th Cir.2010), this case is not one of them. The parties agree on the basic facts necessary to make a determination whether the pictorial, graphic, and sculptural features of Varsity’s designs “can be identified separately from, and are capable of existing independently
The Copyright Act of 1976 provides protection for “original works of authorship fixed in any tangible medium of expression....” 17 U.S.C. § 102(a) (2012). Among the “works of authorship” that the Act protects are “pictorial, graphic, and sculptural works.” Id. § 102(a)(5). “ ‘[PJictorial, graphic, and sculptural works’ include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans.” Id. § 101. “[T]he design of a useful article ... shall be considered a pictorial, graphic, or sculptural work,” and thus copyrightable, “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Id. “A ‘useful article’ is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” Id.
These provisions together require a two-part inquiry to determine whether an article is protectable: first, whether the design for which the author seeks copyright protection is a “design of a useful article,” and if so, second, whether the design of the useful article “incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the [useful] article.” Id. This second question is often referred to as testing the “separability” of the pictorial, graphic, or sculptural features of the design of a useful article. See, e.g., Compendium III §§ 924.1-.2 (“When examining a useful article, the [Copyright] Office must determine whether the article contains any pictorial, graphic, or sculptural features that are separable from its utilitarian function.”); Gay Toys, Inc. v. Buddy L. Corp., 703 F.2d 970, 972 (6th Cir.1983) (“ ‘[U]seful articles’ are not generally copyrightable, although certain .features of ‘useful articles’ may be copyrighted separately.”). This appeal primarily concerns the separability of the graphic features of Varsity’s cheerleading-uniform designs.
1. Separability
Courts, scholars, and students have endeavored to create a test to determine whether pictorial, graphic or sculptural features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101; see, e.g., 2 William F. Patry, Patry on Copyright § 3:135-147 (2015); Note, Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual Separablility in American Copyright Law, 69 Ohio St. L. J. 109, 115-143 (2008); Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339 (1990). We have not yet adopted an approach to determining whether the pictorial, graphic, or sculptural features of the design of a useful article are separable from the utilitarian aspects of a useful article, and so we do so now.
There are two ways to determine whether a pictorial, graphic, or sculptural work is separable from the utilitarian aspects of an article — physical separability and conceptual separability.
Few scholars or courts embrace relying on the physical-separability test without considering whether the pictorial, graphic, or sculptural features of an article are conceptually separable because the physical-separability test has limitations. The physical-separability test works well to draw the distinction between aesthetic articles and useful articles when the objects at issue are three-dimensional, such as statuettes that serve as lamp bases. See Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954). The test is less effective, however, when the article at issue is two-dimensional because it is nearly impossible physically to detach the article from the object on which it appears.
Since Congress passed the Copyright Act of 1976, no court has relied exclusively on the physical-separability test without considering whether the pictorial, graphic, or sculptural features of a design are conceptually separable from the utilitarian aspects of the useful article.
When the Copyright Office “determin