Copyrights in the Fashion Industry – Tips for Protecting Designs

By: Seth Appel PATTISHALL, MCAULIFFE, NEWBURY, HILLIARD & GERALDSON LLP

THE U.S. SUPREME COURT CONFIRMED THAT ARTISTIC designs on clothing can be subject to copyright protection in Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S.Ct. 1002 (2017). This landmark decision follows years of uncertainty and inconsistent application of copyright doctrine in this important area. Although the case involved Varsity Brands’ cheerleader uniforms with their particular arrangements of colors, shapes, stripes, and chevrons, the Court’s ruling provides assurance to American fashion designers who often face an uphill battle to protect and enforce their original designs.

Protection of Fashion Designs in the United States

Guidance Following the Varsity Brands Decision

For attorneys representing designers, the Varsity Brands case serves as a reminder to register certain non-functional aspects of clothing with the U.S. Copyright Office. Moreover, when necessary, copyright owners can resort to the federal courts to enforce their rights against competitors and creators of knockoff designs. The Copyright Act provides extensive remedies for infringement of a registered work—including statutory damages and attorney's fees—so the impact of Varsity Brands could be substantial.

Over the past decade, Congress has considered a number of bills to protect apparel and other fashion designs, most recently the Innovative Design Protection Act of 2012. To this point no such legislation has been enacted. By contrast, the European Union and several European countries specifically protect fashion designs. Because there is no federal statute expressly protecting clothing, the availability of copyright protection—at least for surface decorations and other nonfunctional elements—is crucial.

Counsel for designers have attempted in the past to rely on others types of intellectual property, such as trade dress and design patents, to enforce designers’ rights. These avenues are still available but each presents obstacles. To establish trade dress rights, a party typically must prove acquired distinctiveness—that is, consumer recognition as an identifier of source. This generally requires extensive use and promotion. Given the pace at which copycat designers spring into action, proving acquired distinctiveness can be an insurmountable obstacle. On the other hand, design patent protection extends only to works that are non-functional, novel, and nonobvious, which excludes many clothing designs. Moreover, the time and expense involved in obtaining patent protection often makes this impractical.

Copyright Protection and Separability

Copyright protects “original works of authorship,” including pictorial, graphic, and sculptural works. 17 U.S.C. § 102(a). It does not protect useful articles such as clothing. However, under the separability doctrine, “the design of a useful article . . . shall be considered a pictorial, graphic, or sculptural work”—and therefore subject to copyright—“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.” 17 U.S.C. § 101.

The road to copyright protection of non-functional clothing designs begins with Mazer v. Stein, 74 S.Ct. 460 (1954), in which the Supreme Court laid the foundation for the separability doctrine. That case involved statuettes featuring male and female dancing figures. The Court held that the statuettes were copyrightable, even though they were intended as bases for table lamps—unquestionably useful articles— which included electric wiring, sockets, and lamp shades. It recognized that “Congress intended the scope of the copyright statute to include more than the traditional fine arts.” Id. at 468.

In Kieselstein-Cord v. Accessories By Pearl, Inc., 632 F.2d 989 (2d. Cir. 1989), another leading case in this area, the Second Circuit U.S. Court of Appeals held that a designer’s decorative belt buckles were subject to copyright. While belt buckles generally are utilitarian objects, the court explained, “these are not ordinary buckles; they are sculptured designs cast in precious metals—decorative in nature and used as jewelry is, principally for ornamentation.” Id. at 990. It found that the belt buckle patterns “rise to the level of creative art” and were copyrightable. Id. at 994.

The defendant—a competitor who admitted copying the plaintiff’s belt buckles—argued that they were not subject to copyright because any artistic features were inseparable from the utilitarian aspects of the buckles. The court disagreed. While the plaintiff’s designs could not be “physically” separated from the belt buckles, they could be separated “conceptually.” Id. at 993.

Recent cases involving clothing designs have applied varying reasoning and reflect courts’ struggles in this area.

• In Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005), the court held that the plaintiff’s uniform designs for casino workers were not subject to copyright. It emphasized that the designs were not “marketable independently of their utilitarian function as casino uniforms.” Id. at 422.
• In Chosun International, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005), the court held that the plaintiff’s Halloween costumes (a lion, orangutan, and ladybug) may be subject to copyright. In reversing the trial court’s dismissal, it found that certain features of the costumes such as heads or hands may “invoke in the viewer a concept separate from that of the costume’s ‘clothing’ function, and that their addition to the costume was not motivated by a desire to enhance the costume’s functionality qua clothing.” Id. at 330.
• In Express, LLC v. Fetish Group, Inc., 424 F.Supp.2d 1211 (C.D. Cal. 2006), the court held that the design on the counterclaimant’s tunic was entitled to copyright protection “because the lace and embroidery accents are totally irrelevant to the utilitarian functions of the tunic.” Id. at 1224.
• In Jovani Fashion, Ltd. v. Fiesta Fashions, 500 Fed. Appx. 42 (2d Cir. 2012), cert. denied, 133 S.Ct. 1596 (2012), the court held that the plaintiff’s prom dress design—including decorative sequins and crystals, satin ruching at the waist, and layers of tulle on the skirt—was not copyrightable. It found that these elements were not separable because they “enhance[d] the functionality of the dress as clothing for a special occasion”; thus, their removal would “adversely affect the garment’s ability to function as a prom dress.” Id. at 44.

Against this background, Varsity Brands, a leading producer of cheerleading uniforms, took its fight for copyright protection to the Supreme Court.

The Varsity Brands Case

Varsity Brands owns more than 200 copyright registrations for two-dimensional designs appearing on its cheerleading uniforms. But obtaining a copyright registration is one thing; enforcing it is another. In 2010, Varsity Brands sued Star Athletica, a competitor that it alleged copied its uniforms. Specifically, Varsity Brands alleged copyright infringement of five of its patterns shown below.

The U.S. District Court for the Western District of Tennessee held that the designs were not copyrightable and granted summary judgment in favor of Star Athletica. Varsity Brands, Inc., v. Star Athletica, LLC, 2014 U.S. Dist. LEXIS 26279 (W.D. Tenn. March 1, 2014). It determined that the designs could not be physically or conceptually separated from the “utilitarian function” of the uniforms as required under Section 101. The Sixth Circuit U.S. Court of Appeals reversed, finding the designs “separately identifiable” and protectable. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).

The Supreme Court granted certioriari. In a case that received widespread attention in both the legal and fashion communities, the Court received several amicus briefs, with the fashion industry generally supporting Varsity Brands. The Council of Fashion Designers of America, Inc. (CFDA) argued that a ruling in favor of Star Athletica “would have a swift and deleterious effect on United States fashion industry, leaving fashion designers defenseless against copyists and, thus, undermining their incentive and ability to continue pursuit of creating innovative, original designs.” It emphasized the shift in the U.S. fashion industry over the past century from manufacturing to design, and the need to protect the works of American designers against piracy, particularly in view of new technologies:

While copying in the fashion industry is not a new problem, . . . new technologies have allowed for copying at a great scale, lower costs, and increasing speed. As one designer explained [at a House hearing]: “Digital photographs from a runway show in New York or a red carpet in Hollywood can be uploaded to the Internet within minutes, the 360 degrees images viewed at a factory in China, and copies offered for sale online within days—months before the designer is able to deliver the original garments to stores.”

The Intellectual Property Owners Association and Fashion Law Institute, joined by various designers and fashion industry executives, also filed amicus briefs in support of Varsity Brands; while law professors and others filed amicus briefs in support of Star Athletica.

The Supreme Court’s Decision

The Supreme Court considered the case “to resolve widespread disagreement over the proper test for implementing § 101’s separate identification and independent-existence requirements.” Varsity Brands, Inc., v. Star Athletica, LLC, 137 S.Ct. at 1007. It ruled in favor of Varsity Brands in a 6-2 decision. In a majority opinion written by Justice Clarence Thomas, the Court announced a two-part test for determining copyright protection in this area:

[A] feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work— either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. Id.

Under this test, the Court held that Varsity Brands’ designs may be subject to copyright, as long as they satisfy other prerequisites such as originality. “First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities,” the Court explained. “Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as ‘two-dimensional . . . works of . . . art.’” Id. at 1012.

The Court focused on the language of Section 101 and the Copyright Act as a whole. Under Section 113(a), a copyright owner’s exclusive right to reproduce a pictorial, graphic, or sculptural work “includes the right to reproduce the work in or on any kind of article, whether useful or otherwise.” Id. at 1010. The Court explained that Section 101M is the “mirror image” of Section 113(a): “Whereas §113(a) protects a work of authorship first fixed in some tangible medium other than a useful article and subsequently applied to a useful article, §101 protects art first fixed in the medium of a useful article.” Id. at 1011.

The Court found that it was irrelevant whether Varsity Brands’ designs were physically separable from the uniforms: “The statutory text indicates that separability is a conceptual undertaking.” Id. at 1014.

Likewise, the Court found it insignificant that imaginatively removing the designs from the uniforms and placing them in another medium, such as a canvas, would retain the outline of a cheerleading uniform. “Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted,” the Court explained, “two-dimensional applied art correlates to the contours of the article on which it is applied.” Id. at 1012. The Court compared the uniform designs to a design etched or painted on the surface of a guitar, which would maintain copyright protection if placed on album cover—even though it would still resemble the shape of a guitar. Id.

Star Athletica argued that Varsity Brands’ surface designs themselves were utilitarian because plain white uniforms would be less appealing for cheerleaders. The Court disagreed. It explained that the focus of the separability inquiry is “on the extracted feature and not on any aspects of the useful article that remain after the imaginary extraction.” Id. at 1013. Moreover, the Copyright Act does not protect only features that “have no effect whatsoever on a useful article’s utilization function.” Such an interpretation would deprive the Mazer statuette of protection, since “without the base, the ‘lamp’ would be just a shade, bulb, and wires.” Id. at 1014.

Related Guidance

Counsel must recognize the limitation of the Court’s holding. While Varsity Brands’ surface decorations may be subject to copyright, the uniforms themselves are not. The Court explained that Varsity Brands has “no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions.” Id. at 1013.

As discussed above, Congress has not passed a law specifically directed at protecting fashion designs, and other areas of intellectual property, such as trade dress and design patents, have their limitations. While the full impact of Varsity Brands is not yet known, under some circumstances copyright may be the most effective means of protection and enforcement for designers in the United States.

Seth Appel is a partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP in Chicago, Illinois. His practice covers all aspects of copyright, trademark, unfair competition, and false advertising law, including IP prosecution, licensing, and enforcement. Seth has extensive experience litigating in federal courts and currently serves as Co-Chair of the Copyright Society of the USA, Midwest Chapter.

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