Copyright makes varsity

58 Intellectual Property Magazine

May 2017

www.intellectualpropertymagazine.com

The recent Supreme Court of the US

(SCOTUS) decision in Star Athletica v

Varsity Brands brings fashion designers

hope for greater protection of their

designs. The fashion industry has traditionally

struggled to protect apparel designs through

designs and graphic artwork.

One of the biggest challenges is the

concept of separability – under the Copyright

Act of 1976, a “design of a useful article” is

eligible for copyright protection only if it can

be identiﬁed separately from, and is capable

of existing independently of, the utilitarian

aspects of the article.

In the case of clothing designs, courts have

applied a wide range of tests to determine

which aspects of such designs can be separated

from their utilitarian function.

The court in

Star Athletica v Varsity Brands articulated and

applied a new test for separability, ruling that

certain cheerleader uniform design features

are separable from the uniforms themselves.

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 courts

must use to determine separability under

the Copyright Act. At the very least, the

decision does not further diminish the reach

of copyright protection for fashion designs,

which could have occurred, had the decision

come out differently.

However, it also raises

more questions, and the real-world impact of

the decision remains to be seen.

The Varsity Brands case addressed the

question of whether colourful stripes, zigzags,

and chevrons on cheerleading uniforms are

separable from such uniforms and therefore

eligible for copyright protection. Varsity Brands

obtained over 200 copyright registrations for

two-dimensional designs on cheerleading

uniforms. Star Athletica produced uniforms

with similar designs, leading Varsity Brands to

ﬁle a copyright infringement suit in 2010. The

district court entered summary judgment in

Star Athletica’s favour.

The district court deﬁned Varsity Brands’

uniforms as clothing meant to evoke

cheerleading and then found that without the

design elements at issue, the article of clothing

would no longer function as an article meant

to evoke cheerleading. Relying on a test that

required the designs to be either physically or

conceptually separable from the underlying

article, the district court determined that the

designs could not be physically or conceptually

separated from the useful article unto which

they were applied, and were therefore

prohibited from copyright protection.

On appeal, the US Court of Appeals for

the Sixth Circuit reversed, using a different,

“hybrid” test to determine separability.

This

ﬁve-part test required the circuit court to pose

step-wise questions 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 for various athletic

functions, such as covering the body, wicking

away moisture, and withstanding vigorous

movements. It then found that, because a plain

white uniform, without the designs in question,

would still be capable of performing those

athletic functions, the designs were separable

and not prohibited from copyrightability under

the useful article doctrine. In his dissenting

opinion, Judge McKeague urged Congress or

SCOTUS to intervene and add clarity to the

test for separability.

SCOTUS granted certiorari to determine

the correct 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 to the Varsity Brands

uniforms, the court ﬁrst found that the

cheerleader uniform design features could

easily be identiﬁed as having pictorial, graphic,

or sculptural qualities, and secondly that if the

features were removed from the uniforms

and placed on another medium, they would

be considered two-dimensional works of

art. Because the design features could be

transposed to, for example, a canvas, and

retain sufﬁcient pictorial qualities, the court

A recent high-proﬁle judgment settles the question of what test courts must use to

determine separability under the US Copyright Act

THE CASE:

Star Athletica LLC v Varsity Brands Inc et al

Supreme Court of the US

22 March 2017

Legal decision:

United States

“As courts begin to

apply the test to more

cases, the fashion

industry should get

a better sense of

the extent to which

for fashion designs

has improved.”

Intellectual Property Magazine 59

www.intellectualpropertymagazine.com

May 2017

concluded that the designs were separable

and are not barred from copyright protection

under the useful article doctrine.

The court emphasised 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.

The Varsity Brands opinion has opened

the door for potentially stronger protection

for fashion and apparel designs. The court

acknowledged that certain aspects of fashion

designs, not just graphic artwork and textile

patterns, may be eligible for copyright

protection. However, the court also afﬁrmed

that there is no copyright protection for the

shape, cut, and dimensions of apparel and

acknowledged that apparel designs must also

be sufﬁciently original to qualify for copyright

protection.

The decision provided some clarity on

the statutory interpretation and appropriate

test, but the test also appears to involve an

element of subjectivity that may still result

in unpredictable outcomes. As courts begin

to apply the test to more cases, the fashion

industry should get a better sense of the extent

to which copyright protection for fashion

designs has improved.

This case may increase the number of

by fashion companies. Puma has already

cited the Varsity Brands ruling in its copyright

infringement claim against retailer Forever

21.

Consequently, the case may also increase

clearance and litigation costs for designers,

especially for ‘fast fashion’ and other business

models that take heavy inspiration from

market trends and third party designs.

Fashion brands and their lawyers should

consider adopting the following practices in

the wake of the court’s Varsity Brands decision:

• First, fashion brands should consider

applying for copyright registrations for

at least the most proﬁtable or popular

designs, if it appears that such designs will

pass the new separability test. Copyright

registrations would afford several beneﬁts

that would not be available under state or

common law, including the ability to ﬁle an

enforcement lawsuit in federal court, the

presumption of validity of the registration,

and the availability of statutory damages.

• Secondly, fashion brands should review their

design and product clearance processes to

ensure that potential copyright claims are

considered. This may include monitoring

competitors’ copyright ﬁlings, training

designers on inspiration versus infringement,

and documenting the creation process for

purposes of demonstrating independent

creation.

• Thirdly, fashion brands should monitor

competitors’ products and consider

conducting market sweeps to identify

copying of their “separable” designs.

Company employees can be trained to

recognise infringing designs and may be an

important source of leads.

• Finally, fashion brands and their advisors

should monitor the new cases applying the

Varsity Brands test for insight as to how it is

applied in a variety of factual settings.

Summary

As always, fashion brands should not rely

exclusively on copyright protection to prevent

knock-offs and copying. Due to the limitations

of intellectual property protection for fashion

designs, it is important to incorporate multiple

forms of legal protection.

A good intellectual property toolkit

will stitch together a patchwork of rights

tailored to the company, its products, and

its strategic priorities – including copyright in

separable designs, trade dress and trademarks

for distinctive, source-identifying features,

and design patent for certain shapes of or

ornaments on apparel. Although it is unlikely

that the Varsity Brands decision will have the

dramatic effect that a legislative change may

have made, it is an incremental step that

may strengthen one tool in fashion brands’

intellectual property toolkits.

Footnotes

1. See 17 USC § 101. The Copyright Act’s deﬁnition

of pictorial, graphic or sculptural works that are

eligible for copyright protection includes only the

design features of useful articles that are capable

of existing separately from the utilitarian aspects

of the article. For example, the artistic design

of a belt buckle would be eligible for copyright

protection only if the design can be separated

from the function of the buckle as such.

2. Various courts have developed a wide array of

tests to determine whether a design is separable

from the article of clothing unto which it is

applied, and the outcomes of cases applying

these tests have been inconsistent. For example,

the paws of a Halloween costume were found

to be separable by the Second Circuit in Chosun

International Inc v Chrisha Creations Ltd, 413

F 3d 324 (2d Cir 2005), applying a test that a

useful article as a whole cannot be copyrighted,

but the individual design elements of the article

may be copyrightable if they can be conceptually

separated from the useful article. Seven years

later, however, the same court applied this test in

Jovani Fashion, Ltd v Fiesta Fashions, 500 App’x

42 (2d Cir 2012) to ﬁnd that the beaded designs

on prom dresses are not separable and therefore

not eligible for copyright protection.

3. Separability is not the only requirement for

must be “original works of authorship” that

exist in a tangible form. In Varsity Brands, the

court was deciding the appropriate test for

separability, and not deciding whether Varsity

Brands’ designs meet all the other requirements

of copyrightability, including the requirement of

originality.

4. Varsity Brands et al v Star Athletica, No 10-

02508, 2014 WL 819422 (WD Tenn 2012).

5. Varsity Brands Inc et al v Star Athletica LLC, 799 F

3d 468 (6th Cir 2015).

6. Star Athletica LLC v Varsity Brands, Inc et al, 580

US ___, at 1-2 (2017).

7. PUMA SE v Forever 21, Inc CD Cal, No 2:17-cv-

02523, complaint ﬁled 31 March 2017.

Authors

Megan Baca (top left)

is a partner in Ropes &

Gray’s IP transactions,

life sciences, and

technology, media &

telecommunications

practice groups.

Based in the ﬁrm’s

Silicon Valley ofﬁce,

she advises public and private companies,

investors, and universities in strategic

transactions and licensing where

technology or IP assets are the key drivers.

Erica Han (top right) is a counsel in Ropes

& Gray’s IP transactions practice group in

Boston. She advises consumer branded

product companies in relation to global

brand strategy, trademark clearance and

prosecution, licensing, and resolution of

intellectual property disputes.

Jessica Alfano (bottom left) is an associate

in Ropes & Gray’s IP transactions and life

sciences groups in Boston. She advises

a wide range of public and private

companies in connection with a variety of

corporate, intellectual property and data

privacy matters.

Legal decision:

United States