Fashion Industry May be Left Defenseless Against Infringers

Fashion designers could be left defenseless against copycats if the US Supreme Court rules that certain features are not protected under the Copyright Act. 

The Supreme Court will soon hear oral argument in Varsity Brands, Inc. v. Star Athletica, LLC.  At issue is what, according to Petitioner Star Athletica, LLC, is “the most vexing, unresolved question in copyright law”– the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act.  Star Athletica, LLC v. Varsity Brands, Inc., 2016 WL 94219, *5  (U.S.)  The Supreme Court’s decision could have significant implications for the fashion and design industries and beyond.  

Currently, clothing and dress designs are not copyright eligible because they are considered useful articles.  However, original, two-dimensional pictorial and graphic designs that appear on  clothing are generally copyright eligible if they are separable from the functionality of the clothing.  Currently, there is no uniform test or rule for determining whether a design is separable from the function of a useful article.  The federal courts, the Copyright Office, and academics have proposed at least ten different tests to analyze this “separability” from the utilitarian or functional aspects.   

In the case pending before the Supreme Court, Respondent Varsity Brands, Inc. designs and manufactures cheerleading uniforms and asserts copyright infringement claims against a competitor, Petitioner Star Athletica, based on the below registrations.  

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The District Court held that the designs perform a “utilitarian function” and are therefore not copyright eligible. The District Court reasoned that the function of the uniform is “not merely to clothe the body,” but to “clothe the body in a way that evokes the concept of cheerleading” and that the designs and colors lie “at the core of the ideal” of “cheerleading-uniform-ness” which is conceptually inseparable from the uniform itself. Varsity Brands, Inc. v. Star Athletica, LLC, 110 U.S.P.Q.2d 1150, 2014 WL 819422 *1, 8-9 (W.D. Tenn. March 1, 2014).

On appeal, the United States Court of Appeals for the Sixth Circuit reversed, holding that the function of the uniform is to cover the body, wick away moisture, and withstand rigors of athletic movement.  The Sixth Circuit held that the two-dimensional graphic designs can be identified separately from, and are capable of existing independently from, the utilitarian aspects of the uniform, and are therefore copyright eligible.  Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 491-92 (6th Cir. 2015) cert. granted in part, Star Athletica, LLC v. Varsity Brands, Inc., 136 S.Ct. 1823 (May 2, 2016).

This is an area of law that would benefit from clarity from the Supreme Court.  The Fashion Law Institute, a nonprofit dedicated to the law and business of fashion, has filed an amicus brief urging the Supreme Court to clarify that separability should be flexible, and not subject to a bright-line test that could hurt the fashion industry, which has “come to rely on this longstanding [copyright] protection for separable elements of expressive design.”

The Council of Fashion Designers of America, Inc., whose membership includes fashion and accessory designers, similarly urges the Court in its amicus brief to reaffirm that copyright protection exists for two-dimensional designs on clothing, and warns that if copyright protection does not exist, fashion designers would be left “defenseless against copyists” and a ruling would cause “a swift and deleterious effect on [the] United States fashion industry.”

Oral argument before the Supreme Court is scheduled for October 31, 2016.  The case is Star Athletica, LLC v. Varsity Brands, Inc., Case No. 15-866.

Image Courtesy of: Brittany Hogan Used under Creative Commons license