A few weeks ago, the U.S. Supreme Court ruled in Star Athletica, LLC v. Varsity Brands, Inc. that Varsity Brand’s two-dimensional graphic designs on cheerleader uniforms could be eligible for copyright protection as separable features of the design of the uniforms.
“The Supreme Court’s ruling in Varsity Brands has resolved longstanding disagreement among the lower courts over how to determine whether features incorporated into the design of a useful article – in this case the characteristic lines, stripes and chevrons of a cheerleading uniform – are eligible for copyright protection,” Jason Rosenberg, a partner in Alston & Bird’s Trademark & Copyright Group, said. “But the opinion is perhaps most notable for what it did not do, that is, provide much in the way of certainty as to how any particular case will turn out.”
In fact, when applying the majority’s new test, both dissenting judges reached the exact opposite conclusion - that the designs could not be perceived as works of art separate from the uniforms themselves. So, one thing is clear - copyright law provides no more protection to fashion design than it did before the Court’s ruling.
Rosenberg sat down with Inside Counsel in a recent interview to discuss how much copyright law protects fashion design. According to him, it really doesn’t. Congress has debated whether it should for decades, but nothing has come of it.
For example, in 2012 the Senate considered the Innovative Design Protection Act, which would have extended copyright protection to fashion designs that were creative and unique, but it did not pass. Supporters of protection argue that fashion designs are a form of artistic expression that should be protected the same as other copyrightable subject matter.
“By not having copyright protection, designers are hurt by copycats,” he said. “It also, some argue, puts the U.S. at a disadvantage, because European countries do protect fashion design through copyright. On the side, however, some argue that this copying drives innovation, at the same time benefitting the larger market as trends are created.”
However, copyright does protect applied art on clothing, meaning that if you paint an original picture and then re-print it on a dress, the picture doesn’t lose its protection. But that protection does not extend to other aspects of the dress, like the cut, shape, etc.
“Situations like this aren’t particularly complicated, but in cases like Star, where the ‘art’ is a selection of chevrons, lines, and shapes, the question of conceptual separability has always been harder,” explained Rosenberg.
Post-Star, we know that copyright will protect artistic features of a useful article if the feature can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work if imagined separately from the article. There is no copyright protection for useful articles, but under the ruling in Star, artistic features of useful articles can be protected if they meet the requirements of the Star test for conceptual separability.
The Court focused on the language of the statute, and made an express point that its test would not “render the shape, cute, and physical dimensions” of clothing eligible for copyright protection. Only unauthorized reproduction of the surface designs – the lines and chevrons one typically associates with cheerleading uniforms – would be prohibited. In a sense, the case was a victory for those wanting to extend protection in that the Court did not do anything to lessen the already limited protections currently available.
“What we are likely to see is increased enforcement by fashion designers over copying of design elements, such as shapes and lines, used in their clothing,” he said. “Under the Court’s test, it is difficult to conceive of any two-dimensional design that would not be conceptually separable from the underlying piece of clothing.”
Rosenberg expects we’ll see more arguing over the question of originality, which is the threshold issue in copyright. Under precedent, the “quantum of creativity” for copyright protection is low – but not non-existent. Would the designer of a polo shirt, for instance, with a red and black stripe design across the chest, be able to present others from using the same stripe? The Court made a point that it was not addressing that critical question with regard to Varsity’s designs.
So, what are the best practices for companies looking to protect the design elements of useful articles?
There is unfortunately no all-in-one solution to protecting design elements of useful articles like clothing. According to Rosenberg, those looking for protection may consider employing various methods in combination. Trademark law may provide some protection when some element of your design serves not just an ornamental function, but also as a source identifier.