A uniform standard for copyright industrial designs

October 17, 2017
Patterson Thuente IP

Fashion and apparel have long existed in a cloud of copyright confusion. Clothing often incorporates design elements, which may be protectable, and functional elements, which aren’t. The U.S. Supreme Court has now established a two-part test intended to resolve “widespread disagreement” regarding copyright protection for such “industrial designs.”

Outfit sellers square off

Varsity Brands, Inc., designs, makes and sells cheerleading uniforms. It owns more than 200 U.S. copyright registrations for two-dimensional designs that appear on the surface of its uniforms, primarily “combinations, positionings, and arrangements of elements,” including chevrons, lines, curves, stripes, coloring and shapes. Star Athletica, LLC, also markets and sells cheerleading uniforms. Varsity sued Star Athletica for infringing its copyrights in five designs.

The Copyright Act of 1976 makes “pictorial, graphic, or sculptural features” of the “design of a useful article” eligible for copyright protection as artistic works if the features can be identified separately from — and are capable of existing independently of — the articles’ utilitarian (or useful) aspects. A useful article is one with an intrinsic utilitarian function more than merely portraying the appearance of the article or conveying information (for example, a piece of clothing). Useful articles themselves aren’t protectable by copyright.

The trial court dismissed Varsity’s case before trial. It held that Varsity’s designs weren’t protectable pictorial, graphic or sculptural works because they served the useful function of identifying the garments as cheerleading uniforms. Therefore, the court said, the designs couldn’t be physically or conceptually separated from the utilitarian function of the uniform. The Sixth Circuit Court of Appeals disagreed and reversed.

Court fashions a test

On appeal, the Supreme Court set out to determine whether Varsity’s arrangements of lines, chevrons and colorful shapes on the surface of their uniforms were eligible for copyright protection as separate features of the uniforms’ designs. To do so, it established a two-part test. Under the test, a feature incorporated into the design of a useful article is eligible for copyright protection only if it:

  1. Can be perceived as a nonuseful 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 embodied in an object from which the work can be perceived, reproduced or otherwise communicated — if it were imagined separately from the useful article.

According to the Court, copyright protection extends to pictorial, graphic and sculptural works regardless of whether they were created as freestanding art or as features of useful articles.

Applying the test to the uniform decorations, the Supreme Court found they were separable and therefore eligible for copyright protection. The decorations could be identified as features with pictorial, graphic or sculptural qualities. And, if they were separated from the uniforms and applied in another medium, they would qualify as two-dimensional works of art under the Copyright Act. Imaginatively removing the decorations from the uniforms and applying them in another medium also wouldn’t replicate the uniform itself.

The Court cautioned, though, that the two-dimensional applied art on the surface of the uniforms were the only feature eligible for a copyright. Varsity has no right to prevent anyone from manufacturing a cheerleading uniform that’s identical in shape, cut or dimensions to the uniforms at issue.

The focus should be on the extracted design features, the Court emphasized, not on any aspects of the useful article remaining after the imaginary extraction. The law doesn’t require the imagined remainder to be a fully functional useful article.

Something to cheer about

The high court’s ruling provides clothes designers and manufacturers with some certainty regarding the test that courts will apply when determining whether copyright protection is available. They should bear in mind, though, that a garment’s shape, cut and dimensions remain unprotected. 

Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, March 22, 2017 (U.S.)

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