BizTech Law Blog

Copyright is “In Fashion” Following Supreme Court’s Decision Upholding Protection for Cheerleading Uniform Design

On March 22, 2017, in a 6-2 decision, the U.S. Supreme Court affirmed a ruling by the Sixth Circuit Court of Appeals in the case of Star Athletica LLC v. Varsity Brands Inc. that two-dimensional graphic designs are entitled to copyright protection as “pictorial, graphic, and sculptural works” under the copyright law for useful articles under certain circumstances. It is the first time that the Supreme Court has addressed copyright protection for apparel, and the ruling bolsters legal protections for members of the fashion and apparel industries.

The case resolved a dispute between Varsity Brands, a manufacturer of apparel including cheerleading uniforms, and its competitor Star Athletica. Varsity received U.S. copyright registrations for several of its cheerleading uniform designs for “two-dimensional artwork.” The designs included graphical elements such as stripes, chevrons, zigzags, and colorblocks. Star Athletica created similar uniforms, which led to the copyright infringement lawsuit by Varsity Brands.

Since cheerleading uniforms are items of clothing, they are considered “useful articles” under the Copyright Act, which limits their eligibility for protection. Section 101 defines “useful articles” as “items having an intrinsic utilitarian function which is not merely to portray the appearance of the article or convey information.” While useful articles are not eligible for copyright protection, decorative and ornamental features of a useful article may be eligible for copyright protection “if, and only to the extent that, such design[s] incorporate pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” The Copyright Act requires an analysis to determine whether a clothing item’s artistic features can be separated from the useful article itself.

Star Athletica won at the district court level, but the Sixth Circuit reversed and ruled in Varsity Brand’s favor on the issue of whether Varsity Brand’s designs are copyrightable pictorial, graphic, or sculptural works. The Sixth Circuit set forth a five factor test to determine whether “pictorial, graphic, or sculptural features” are distinguishable from the utilitarian function of a useful article:

• Is the design a pictorial, graphic, or sculptural work?
• If the design is a pictorial, graphic, or sculptural work, then is it a design of a useful article?
• What are the utilitarian aspects of the useful article?
• Can the viewer of the design identify “pictorial, graphic, or sculptural features” separately from the utilitarian aspects of the useful article?
• Can “the pictorial, graphic, or sculptural features” of the design of the useful article exist independently of the utilitarian aspects of the useful article?

The Supreme Court upheld the Sixth Circuit decision, but set forth a new two-step test to determine whether “pictorial, graphic, or sculptural features” are distinguishable from the utilitarian function of a useful article. The Supreme Court explained that 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 fixed in some other tangible medium of expression - if it were imagined separately from the useful article into which it is incorporated.

Applying the test to Varsity’s cheerleader designs, the Supreme Court ruled that, assuming the designs satisfied all other requirements for copyright protection, they were works protected by copyright:

“First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as ‘two-dimensional . . . works of . . . art,’ §101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself. Indeed, respondents have applied the designs in this case to other media of expression—different types of clothing—without replicating the uniform. The decorations are therefore separable from the uniforms and eligible for copyright protection.”

The Varsity Brands decision is a victory for the fashion design industry, and will likely lead to more copyright registrations of artistic features of designs. If you design clothing with artistic features, we can help you to evaluate whether it would be advisable to seek copyright registration, in addition to design patent or trade dress protection, for your designs.

Categories: Copyright, Intellectual Property