Frankfurt Kurnit Klein & Selz

May 4th, 2016

Supreme Court Decision Will Clarify Copyright Protection for Fashion Designs

On Monday, the Supreme Court agreed to hear arguments in Star Athletica v. Varsity Brands, which could set the stage for greater clarity in copyright law in the fashion and design industries. The Supreme Court will likely determine which test courts should apply when analyzing whether a design feature or element of an otherwise uncopyrightable "useful article" is "conceptually separable" and thus eligible for copyright protection. The argument will be heard in the Supreme Court's next term, which starts in October 2016.

Designers, manufacturers, retailers, and advertisers may all be impacted by the decision. Here's what you need to know.

Background

Varsity Brands, Inc. ("Varsity"), a cheerleading uniform manufacturer, sued Star Athletica ("Star") for copyright infringement asserting that Star's cheerleading uniforms too closely resembled Varsity's registered designs. Under the Copyright Act, clothing and most other fashion items are considered "useful articles," which are only entitled to copyright protection to the extent they incorporate pictorial, graphic, or sculptural ("PGS") elements that are separately identifiable from their utilitarian aspects. The district court granted Star's motion for summary judgment, finding that Varsity's designs were not copyrightable because the designs were not separable from the utilitarian function of a cheerleading uniform, because they made the garment recognizable as a cheerleading uniform. On appeal, the Sixth Circuit adopted a "hybrid" approach to conceptual separability to determine whether the PGS elements of the cheerleading uniform, namely, its chevrons, lines, and shapes, were identifiable separately from the uniform itself. The court looked at the most basic purpose of a cheerleading uniform and determined that the chevrons, lines, and shapes on Varsity's uniforms did not enhance the uniform's capacity to function as a clothing item: A plain white cheerleading uniform, the court reasoned, would work equally well to meet the utilitarian demands of cheerleading and would be just as easily recognizable as a cheerleading uniform. On that basis, the court determined that Varsity's designs were entitled to copyright protection.

As the dissenting opinion in the Varsity Brands decision noted, "[t]he case law in this area is a mess." The court identified nine different approaches used by various courts to determine conceptual separability and then created its own, tenth approach.

What this means

A decision from the Supreme Court would hopefully provide needed clarity and consistency to this important area of copyright law. Whatever approach the Court adopts, whether it offers more or less protection for design elements, the decision is likely to have a significant impact on the fashion and design industries. A decision increasing protections for design elements, for example, would empower designers' efforts to prevent the sale of knock-offs. The decision would likely also impact advertisers and others who promote and feature fashion items as part of their business.

If you have questions about the Star Athletica case or other intellectual property matters, please contact Rachel Kronman at (212) 705 4855 or rkronman@fkks.com, or any other member of the Fashion or Litigation groups.