Copyright Protection for Fashion Designs in the Wake of Starathletica

• Jurisdiction: United States,Federal
• Citation: Vol. 23 No. 09
• Publication year: 2019

Copyright Protection for Fashion Designs in the Wake of STARATHLETICA

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By Brett R. Tobin

In March 2017, the United States Supreme Court issued its decision in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Gt. 1002 (2017), affirming that certain aspects of designs on cheerleading uniforms were eligible for copyright protection. In resolving a convoluted circuit split and by announcing a new test for copyright separability analysis, the ruling garnered significant immediate attention. As with any major Supreme Court decision, though, the on-the-ground effects will take some time to sort out. Similarly, the law of unintended consequences suggests that the impacts of a decision affecting such a complex area of the law are likely to pop up in unexpected ways.

This article attempts to put the Star Athletica decision into context by discussing the case and the copyright law it analyzed while also examining its impact so far and potential future consequences. In this regard, potential effects in the Hawaii market are of particular interest given the widespread use of design patterns for aloha attire and other clothing.

Separability and Useful Articles

Though perhaps one might not have anticipated that cheerleader uniform designs would generate a legal dispute of national significance, the history of Supreme Court jurisprudence has proven time and again that it works in mysterious ways.

Varsity Brands, Inc. ("Varsity") designs, manufactures, and sells cheerleading and dance team uniforms and is one of the market leaders in that field. Varsity has over 200 copyright registrations for its uniform designs, consisting largely of various combinations of chevrons, stripes, and lines. In 2010 Varsity sued rival Star Athletica, LLC ("Star Athletica") for allegedly infringing on five of those designs (as shown on this page). The dispute centered on the copyright doctrine of separability.

By way of background, eligibility for federal copyright protection flows only to "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102(a). These works can take the form of literary works, musical works, dramatic works, and "pictorial, graphic, and sculptural works," among other things. Id. Pictorial, graphic, and sculptural works—or "PCS works"—are further defined to 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." 17 U.S.C. §101. The statute goes on to pro vide that "[s]uch works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned." Id. Thus, the Copyright Act attempts to draw a line between the aesthetic and functional aspects of a work, with copyright protection reserved for the artistic, not the utilitarian features.

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That line exists as one example of the effort the law makes to distinguish and balance between patent and copyright law—pushing protection of functional items toward patent and artistic works toward copyright. As such, industrial designs and so-called "useful articles" are typically not eligible for copyright protection. Under Section 101 of the Copyright Act, a "useful article" is defined as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. § 101. Articles of clothing have historically been classified as "useful articles" because they serve a primary function of covering and protecting the body from the elements beyond any aesthetic qualities they might also possess.

The design of a useful article can still be eligible for protection as a PGS work, but "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. The inquiry into whether the design of a useful article has pictorial, graphic, or sculptural elements that can be separated from the utilitarian functions of the item is sometimes known as the "separability test."

In proceedings before the District Court of the Western District of Tennessee, Star Athletica contended that Varsity's designs failed the separability test because the designs could not be extricated from their useful function of identifying the outfits as cheerleading uniforms, and thus they were not eligible for copyright protection. See Varsity Brands, Inc. v. Star Athletica, LLC, 2014 U.S. Dist. LEXIS 26279, 2014 WL 819422 (WD. Tenn. Mar. 1, 2014). The court agreed, granting summary judgment on the issue and invalidating Varsity's copyrights. Id.

On appeal, the Sixth Circuit struggled to settle upon an appropriate test for separability, identifying nine distinct approaches that various courts had used or commentators had proposed. See Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 484-85 (6th Cir. 2015). In some instances, courts had even applied multiple separate tests in the same case. See id. at 485-87. Ultimately, the Sixth Circuit fashioned its own hybrid approach, combining some elements from existing tests, thus essentially creating a tenth separability test. Id. at 487-88. Applying this hybrid test, the Sixth Circuit...