Supreme Court Rules That Garment Design Elements Are Copyrightable

In the groundbreaking decision of Star Athletica, L.L.C. v. Varsity Brands, Inc., the U.S. Supreme Court ruled that design elements of clothing could qualify for copyright protection under certain circumstances.

The High Court rules on copyright questions relatively rarely, so any copyright-related decision is likely significant for the creative industries that rely on intellectual property protection. This decision will have particularly important implications for the fashion industry. Historically, fashion has enjoyed only limited copyright protection. For example, the shape of a garment's cut or its patterns are not protectable. More often, fashion designers rely on other forms of intellectual property protection, such as trademark.

Star Athletica, however, confirms that some degree of copyright protection is available for fashion and apparel. The Court ruled in favor of Varsity Brands, deciding that design features can be separable from the apparel's useful features under a new legal test.

Justice Clarence Thomas authored the majority opinion, dated May 22, 2017.

Factual Background to Star Athletica Case

This case involves the attempt of Varsity Brands—a dominant American cheerleader uniform maker—to sue a smaller rival, Star Athletica LLC, for infringing on five of its cheerleader uniform designs. In 2010, Varsity had filed a lawsuit claiming that Star Athletica used certain chevron and line designs from its uniforms.

Varsity argued the graphic elements of its cheerleader uniforms were separate from the uniforms' function. Therefore, the company asserted, they were protectable like any other piece of art. Star Athletica disagreed, arguing that the uniforms' design and functionality were inseparable. As with most uniforms, these cheerleader uniforms were sewed inside out to prevent chafing. The colorful linear designs on the outside cover the garment's seams.

Star Athletica argued that Varsity's "industrial" design, impacted by utilitarian considerations, does not warrant copyright protection under the statute. Thus, it asserted, Varsity had no valid legal claims.

Star Athletica pointed to the exclusion of copyright protection under the Copyright Act of 1976 for a "design of a useful article" that cannot be separated from the article's utilitarian aspects. Specifically, 17 U.S. Code § 101 notes that "the design of a useful article… shall be considered a pictorial, graphic, or sculptural work 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."

The Supreme Court was asked to decide whether the colorful zigzags, chevrons, and lines on Varsity's colorful cheerleading uniforms could be identified separately from the "useful" uniforms, and whether they are thus eligible from copyright protection.

Legal Analysis in Star Athletica Case

Generally, copyright protection grants certain exclusive rights to creators of various works, from paintings and sculptures to poems and books. But the copyright protection available to certain fashion designs is far less certain.

Lower federal courts were divided on whether Varsity's stripes and chevrons were a "useful article" immune to copyright, or whether they were somehow distinct from the useful aspects of the uniforms and thus protectable.

Ultimately, the Supreme Court sided with Varsity, affirming a lower court's ruling in a 6-2 decision that Varsity's infringement claims against Star Athletica could proceed.

The Court held that, "a feature incorporated into the design of a useful article [such as clothing] 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."

In other words, a design incorporated into clothing is potentially protectable under the Copyright Act of 1976 if it could separately qualify for copyright protection.

The Court's decision was controversial in the copyright world. Indeed, leading intellectual property law professors Christopher Buccafusco of Cardozo School of Law and Jeanne Fromer of NYU School of Law filed a lengthy amicus brief siding with Star Athletica. "The fundamental justification for the useful articles doctrine is to exclude from copyright protection aspects of works that exhibit both expression and function," the professors explain. "Varsity's cheerleader uniform designs, however expressive they might be, should not receive copyright protection because they are also utilitarian." Other critics of the Court's decision have pointed out that Congress never intended for the Copyright Act protect utilitarian features, which were better protected through design patent or utility patent.

The Supreme Court, however, decided to allow some degree of copyright protection to exist for apparel designs. The decision's effects could extend far beyond cheerleading squads.

Implications for the Fashion Industry

The possibility of copyright protection will likely encourage clothing and apparel designers to think more deeply about intellectual property protection. While fashion designers previously relied on a patchwork of protections through trademark, trade dress, utility patents, and design patents, copyright was rarely a workable option.

Star Athletica will encourage fashion companies to do their best to fit within the Court's copyright test. To the extent that a relatively inexpensive copyright protection can help designers to scare away competitors and imitators, they will surely pursue such protection.

Effective date: May 22, 2017