United States: Star Athletica vs. Varsity Brands: Supreme Court Rules On Copyrightability Of Apparel Design

The Supreme Court of the United States' decision in Star Athletica, L.L.C. v. Varsity Brands, Inc. could result in increased opportunity with respect to the applicability of copyright law as it relates to fashion and apparel, a historically uncertain area of intellectual property law. In 2010, Varsity Brands, an apparel manufacturer, sued Star Athletica, another apparel manufacturer, alleging copyright infringement of its registered designs on cheerleading uniforms. At issue in the case was 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. The Court was asked to decide the correct test for determining whether the graphic features of colorful stripes, zigzags and chevrons on Varsity Brands' cheerleading uniforms could be identified separately from and are capable of existing independently of the uniforms themselves and are thus eligible for copyright protection. On March 22, the Court articulated and applied the test for separability. The Court ruled in favor of Varsity Brands, deciding that the design features are separable from the uniforms themselves under the Court's test. This decision confirms that copyright protection is available to some degree for the fashion and apparel industry (although not for the cut, shape, and pattern of garments) and settles the question of what test will be used to determine whether certain elements of clothing designs are eligible for copyright protection.

Intellectual property protections as they relate to the fashion industry comprise a patchwork of rights, including design patent, trademark, and copyright protections. Design patents can be used to protect the shapes of or ornaments on apparel, but only for a relatively short period of time. Trademark and trade dress can be used to protect distinctive features of apparel, such as logos applied to apparel or the distinctive shape of a purse, but only those elements that are non-functional and serve to identify the article's source. Copyright can be used to protect original graphics or unique prints and patterns applied to fashion designs, but only if such patterns and graphics can be separated from the article onto which they are applied. All told, there are varied methods for protecting parts of fashion and apparel designs – but there is not one doctrine that completely protects all aspects of an item of clothing, and certain aspects of clothing (e.g., the cut or shape) have generally gone without any protection in the U.S. Indeed, several efforts to introduce legislation expressly granting rights in fashion designs have been rejected over the years.

Varsity Brands sought to use copyright to protect its designs in cheerleading uniforms and obtained over 200 copyright registrations for two-dimensional designs on cheerleading uniforms. Such designs depicted the arrangement of elements such as stripes, zigzags, and chevrons as placed on a cheerleading uniform. Star Athletica produced uniforms with very similar designs, leading Varsity Brands to file a copyright infringement suit against Star Athletica.

The district court entered summary judgment in Star Athletica's favor, finding that Varsity Brands' designs were not separable from the useful article unto which they were applied and, therefore, not eligible for copyright protection. The district court defined Varsity Brands' uniforms as clothing meant to evoke cheerleading. It then found that the stripes, zigzags and chevrons comprising Varsity Brands' registrations could not be physically or conceptually separated from the garments because, without those design elements, the article of clothing would no longer function as an article meant to evoke cheerleading.

On appeal, the Sixth Circuit reversed, using a different, "hybrid" test to determine separability. This five-part test required the court to determine whether there are pictorial, graphic or sculptural aspects of a useful article that a viewer can identify as separate from its utilitarian aspects and whether those features can exist independently of the utilitarian aspects. The circuit court defined the useful article as a uniform meant to cover the body, wick away moisture and withstand rigorous athletic movements. It then found that the designs, applied to the uniform, are separable and therefore do not fall under the prohibition against copyrighting useful articles. The Circuit Court reasoned that a plain white uniform, without the designs in question, would still cover the body, wick away moisture, and withstand rigorous athletic movements.

The Supreme Court granted certiorari to determine the test for when a feature of a useful article is protectable under § 101 of the Copyright Act. The Court set forth the following separability test: "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 in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated." In applying this test, the Court found, first, that the stripes, zigzags and chevrons can easily be identified as features having pictorial, graphic or sculptural qualities, and, second, that if the stripes, zigzags and chevrons were removed from the uniforms and placed on another medium, they would qualify as two-dimensional works of art. Because the design features could be transposed from a piece of clothing to, for example, a canvas, and retain sufficient pictorial, graphic or sculptural qualities, the Court concluded that the designs are separable and are therefore not barred from copyright protection under the useful article doctrine.

The Court emphasized that the focus of the separability inquiry is on the extracted design features and not the aspects of the useful article that remain after the design features have been removed. The inquiry is not how useful a plain white uniform is, once stripped of stripes and chevrons, but instead, whether the stripes and chevrons are copyrightable unto themselves. In fact, the Court indicated that the useful article need not remain an equally, or even fully, functioning article when the design features are removed. It therefore dismissed Star Athletica's argument that, without the stripes, zigzags and chevrons, the cheerleading uniforms would not function as such.

Both the majority and concurring opinions note that the Court was deciding the appropriate test for separability, and not deciding whether Varsity Brands' designs meet all the other requirements of copyrightability. Both opinions reference the originality requirement for copyrightability and explicitly state that determining whether the designs meet that bar is neither at issue nor decided by this case. This caveat could limit any potential expansion in copyright protection for the fashion and apparel industry.

This case settles the question of the appropriate test for determining separability under the useful article doctrine. The Court's application of its test to find that Varsity Brands' designs are separable could result in increased opportunity for fashion designers to use copyright to protect their designs, because designers can now rely on a uniform test to be applied by courts, as well as the recognition that decorative designs incorporated into clothing at least have the potential for copyright protection. Consequently, it may also increase risks and require a change in clearance practices for fashion designers who regularly take inspiration from existing marketplace trends. However, this case maintains the status quo with respect to the long-held understanding that copyright protection does not extend to the shape, cut, and dimensions of an article of clothing.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
Vedder, Price P.C.
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Vedder, Price P.C.
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions