United States: "When I Say Design, You Say Copyright! Supreme Court Ruling In Cheerleader Uniform Case To Provide Extra Protection For Fashion Designers"

Fashion designers around the nation are likely cheering after reading the United States Supreme Court's recent decision in Varsity Brands, Inc. v. Star Athletica LLC. That case involved whether the two-dimensional designs on Varsity Brands, Inc.'s cheerleading uniforms were eligible for copyright protection, and the Court said yes.

Varsity Brands, Inc. designs, makes and sells cheerleading uniforms, and has more than 200 copyright registrations for two-dimensional designs appearing on its cheerleading uniforms (such as arrangements of lines, curves, stripes, angles, diagonals, inverted chevrons, colorings and shapes). Varsity sued Star Athletica LLC, which also markets and sells cheerleading uniforms, for infringing Varsity's copyrights in five specific designs used on cheerleading uniforms. Before we discuss the Court's decision, let's take a look at how it got there.

Requirements for Asserting a Copyright Infringement Claim

What requirements need to be met to successfully assert a copyright infringement claim? First, you must own a valid copyright. See Star Athletica, L.L.C. v. Varsity Brands, Inc. (U.S., Mar. 22, 2017, No. 15-866) 2017 WL 1066261, at *6. Second, a valid copyright extends only to copyrightable subject matter, which the Copyright Act of 1976 defines as "original works of authorship fixed in any tangible medium of expression." Id. "Works of authorship" include two-dimensional and three-dimensional works of fine, graphic and applied art. Id. "Works of authorship" are "fixed in a tangible medium of expression" when they are embodied in a material object from which the work can be perceived, reproduced or otherwise communicated. Id.

Two-Part Separability Test

The Court implemented a new two-part test for copyrighting a "pictorial, graphic or sculptural work" (which includes two-dimensional works of art) into a "useful article" (defined as an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information). To copyright a "pictorial, graphic or sculptural work" incorporated into a "useful article,"(1) the pictorial, graphic or sculptural features must be able to be identified separately from the utilitarian aspects of the article; and (2) they must be capable of existing independently of, the utilitarian aspects of the article. Id.

To satisfy the first requirement, you only need to look at the useful article and spot a two or three-dimensional element that appears to have pictorial, graphic or sculptural qualities. Id at 7. To satisfy the second requirement, you must determine that the separately identified feature has the capacity to exist apart from the utilitarian aspects of the article. Id. This means that the feature must be able to exist as its own pictorial, graphic or sculptural work once imagined apart from the useful article. Id. If the feature can't be imagined apart from the useful article, then it was not a pictorial, graphic or sculptural feature of the article — instead, it was one of the utilitarian aspects of the article. Id.

Application of the Court's Two-Part Separability Test

The Court held that the two-dimensional designs on Varsity's cheerleading uniforms met the requirements of the two-part separability test. As an initial matter, per statute, the two-dimensional designs are included in the definition of a "pictorial, graphic, or sculptural work." The "useful article" is the clothing (dress) itself, the intrinsic utilitarian function of the article likely being to cover the body.

Now, let's apply the two-part separability test to the two-dimensional designs on Varsity's cheerleading uniforms. First, can the two-dimensional designs be identified separately from the utilitarian aspects of the article? Yes. One can imagine the zig zags/chevrons/stripes by themselves (and not on the dress). Second, are the two-dimensional designs capable of existing independently of the utilitarian aspects of the article? Yes. One can imagine the zig zags/chevrons/stripes on a different article such as a vase or a shoe.

Let's look at another example — a white t-shirt with Chanel's widely known "CC Monogram" trademark on it, which consists of two interlocking back-to-back letter Cs. The design of that CC Monogram is eligible for copyright protection. First, one can imagine the CC Monogram by itself and not on the white t-shirt. Second, the CC Monogram can exist independently of the white t-shirt; one can imagine the CC Monogram on a makeup case, a skirt or a blanket.

Issues with the Two-Part Separability Test

The test might seem straightforward, but there are several issues which courts will have to carve out.

First, how do you determine whether an article is "useful" or has "intrinsic utilitarian aspects"? It is easy to imagine the intrinsic utilitarian aspects of clothing, furniture such as a table or chair, and even a hairbrush, but what about a decorative rug? Does that qualify as a "useful article" under the Court's analysis? Also, what is considered "useful" under the clothing category? Are ties and sashes considered "useful" or decorative?

Second, there appears to be no distinction for artistic features that contribute to the usefulness of the article. For example, Star Athletica argued that without the zig zags/chevrons/stripes, you are left with a plain dress rather than a cheerleading uniform and thus the resulting dress does not remain equally useful. A similar argument can be made for a camouflage design on jackets and pants. The "usefulness" of the articles — one being to identify as a cheerleader and the other being to disguise, is affected by separating the designs from the article. The two-part test does not take into account the resulting usefulness of the article, and the Court rejected the view that a useful article must remain after the artistic feature has been imaginatively separated from the article. Id at 12.

Third, what happens if the design features are three-dimensional and are a part of (not on) the useful article? Let's imagine a small decorative bowl, the sides of the bowl being in the shape of flower stems and flowers (because the design features are three-dimensional, the flower stems and flowers are not on the sides of the bowl, they are the sides of the bowl themselves). Again, it is unclear whether a "decorative" bowl would qualify as a "useful" article. Nevertheless, under the two-part separability test, the three-dimensional design (the flowers and stems) (1) can be identified separately from the bowl; and (2) can exist independently of the bowl (for example, they can be on the top of a vase, or on the base of a picture frame). Thus, the three-dimensional design would be eligible for copyright protection. However, once the three-dimensional design is separated, the resulting article is just the bottom/base of the bowl and would not even qualify as a "bowl" anymore. Under the Court's view, it does not matter for purposes of the separability analysis if the usefulness of the resulting article is completely destroyed by separating the design features.

Extra Protection for Fashion Designers?

Fashion designers typically rely on trademark protection for their designs. Now, fashion designers can argue that more conceptual features of their designs are eligible for copyright protection. Although it is not clear what exact effect the Court's decision will have, it is likely that designers will rely more heavily on copyright law to challenge knock-offs of their designs. Of course, features of their designs will have to pass the two-part separability test to be eligible for copyright protection. We will have to wait and see how courts apply the separability analysis, and how the courts determine what a "useful" article is, in different situations.

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