A recent case from the 6th Circuit Court of Appeals examined the question “Are the stripes, chevrons, zigzags, and color blocks that adorn most cheerleading uniforms sufficiently creative to be protected under US Copyright law?” The case, Varsity Brands et al. v. Star Athletica, No. 14-5237 (6th Cir. 2015), involves a lawsuit between competing suppliers of cheerleading uniforms and “warm-ups.” Plaintiff Varsity, claimed that defendant Star had copied protectable elements of it’s uniform designs. The District court agreed with Star, but the Court of Appeals reversed. The case holds important lessons for creative professionals seeking to protect their original work in an increasingly completive environment where “knock-offs” and copycat designers are all too common.
Back in 2013, I published “Fashion Law: Protecting Brands and Designs,” an article in Landslide, the legal publication of the Intellectual Property section of the American Bar Association. The article is available here. Although the article addressed protection under Trademark and Patent, in addition to Copyright, one of the primary issues was and is when, if ever, can the design features incorporated into the design of a useful article be identified separately from, and exist independently of, the utilitarian aspects of the article?” The Varsity case provides useful insight and analysis on that question.
Are Fashion Designs Protectable Under Copyright?
The Varsity case answers with a resounding “yes.” First, although copyright protects creative works of authorship fixed in a tangible medium of expression (17 U.S.C. 102(a)), protection requires a certain amount of “originality.” Because so much of fashion design is derivative of what has come before, the hurdle for protection of fashion designs is the tension with §102(a)(5) of the Copyright Act. (17 U.S.C. 102(a)(5)) That section protects pictorial, graphic, and sculptural aspects of apparel if, and only to the extent that, the design 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) §
Courts have viewed this requirement as requiring either “physical separability” or “conceptual separability,” a test that they have struggled to pin down. However, courts that have addressed the issue in the case of designs of clothing have routinely viewed clothing utilitarian because they “cover the wearer’s body and protect the wearer from the elements.” Celebration Int’l, Inc. v. Chosun Int’l, Inc., 234 F. Supp. 2d 905, 912 (S.D. Ind. 2002) “Unlike a patent, a copyright gives no exclusive right to the art disclosed; protection is given only to the expression of the idea—not the idea itself.” Mazer v. Stein, 347 U.S. 201, 217 (1954)
Guidance For Lawyers That Advise Fashion Designers.
In order to help fashion designers protect their ideas, it is important to understand how the court evaluates the protect ability of design elements. The Court engaged in a lengthy examination of the various tests applied by different courts before adopting the widely used “hybrid” approach. According to the Court the best approach to determining whether a design is a copyrightable pictorial, graphic, or sculptural work is to ask a series of five questions from the Copyright Act: 1) is the design a pictorial, graphic, or sculptural work? 2) Is it a design of “an article having an intrinsic utilitarian function?” 3) What are the utilitarian aspects? 4) Can the viewer of the design identify “pictorial, graphic, or sculptural” features separately from the utilitarian aspects? and 5) Can those features exist independently? The Court added that the design process may also help determine whether a design feature is necessary to the design are or to the functionality.
Key Take Always From The Varsity Case.
First, Varsity started from a position of strength. It has registered it’s designs with the US Copyright Office. The Court gave strong deference to the Copyright Office. The lesson for designers is that it’s never too early to seek registration of your work.
Second, be mindful of the aesthetic versus functional distinction during the design process. Design elements that are required to make the item function as a garment will not be protectable.