The Copyrightability of Apparel: From the Sidelines to the Supreme Court
The Supreme Court’s 2017 decision in Star Athletica, LLC v. Varsity Brands Inc. was not just a W-I-N for Varsity Brands — a leading manufacturer of cheerleading uniforms — but also for the entire fashion industry as well. Despite the establishment of copyright rights in the U.S. Constitution, Star Athletica is the first Supreme Court decision that addresses the copyrightability of clothing. Specifically, the decision establishes a test for determining when design elements of an article of clothing are protectable by U.S. copyright law.
While cheerleading uniforms may not be “high fashion,” the outcome of Star Athletica was so important to the fashion industry that big-name designers such as Narcisco Rodriguez, Jeffrey Banks and the founders of Proenza Shouler filed a “friend of the court” brief urging the Supreme Court to find in favor of Varsity Brands and to provide a clearer framework for determining copyrightability of clothing designs.
Copyright protection pre-Star Athletica
Star Athletica is the most significant development in a long tug-of-war related to the copyrightability of clothing and fashion accessories. Copyright prohibits third-parties from copying “original works of authorship,” which include literary, dramatic, musical and artistic works. To qualify as an original work of authorship, a work must originate from the author (rather than being copied from someone else), and must possess a minimum level of creativity.
While a drawing of a simple geometric shape would not be sufficiently creative to qualify for copyright protection, an arbitrary arrangement of simple geographic shapes might qualify. For example, in Mon Cheri Bridals Inc. v. Wen Wu, even though the designer admitted to using “common elements” in her wedding dress designs, a federal court in New Jersey determined that the designs were sufficiently creative and therefore protectable because the designer changed the size, color and frequency of the common elements.
Despite the low bar, some fashion designs have been denied copyright protection for want of creativity. In Express v. Forever 21, a federal court in California denied copyright protection to Express’ plaid pattern design, which was derived from preexisting designs, because Express’ additions (notably, color changes) did not exhibit even the minimal level of creativity required for copyright protection. Similarly, in Todd v. Montana Silversmiths, Inc., a federal court in Colorado found that Todd’s barbed wire jewelry was not copyrightable because Todd did not arrange the public domain elements in a sufficiently original way.
In addition to creativity, there is another hurdle that designs incorporated into functional articles must overcome for copyright protection, namely, design elements that are also functional are generally not copyrightable. Clothing is clearly functional, which raises the question: Under what circumstances do design elements incorporated into clothing qualify for copyright?
Before Star Athletica, courts provided piecemeal answers to this question by interpreting and applying the “separability” language of the Copyright Act of 1976. The Copyright Act delineates categories of protectable works, and courts have considered clothing as falling in the “pictorial, graphic and sculptural works” category. A work in this category is only protectable to the extent it incorporates “pictorial, graphic or sculptural features that can be identified separately from, and are capable of existing independently of” the functional aspects of the work.
Interpreting this separability requirement in Chosun International Inc. v. Chrisha Creations Ltd., the Court of Appeals for the Second Circuit (which covers New York City) established the following separability test: “when a component of a useful article can actually be removed from the original item and separately sold, without adversely impacting the article's functionality, that physically separable component may be copyrighted.” Applying that test, the court refused to dismiss the plaintiff’s copyright infringement claim, and found that in the case of children’s costumes having hoods shaped like animals, it was possible that the hoods could be physically separated from the overall costume without “…adversely impacting the wearer's ability to cover his or her body.”
In Kieselstien-Cord v. Accessories By Pearl Inc., the same court weighed in on conceptual separability as applied to belt buckles. Because consumers used the belt buckles as “ornamentation for parts of the body other than the waist,” the court determined that the buckles had ornamental aspects “conceptually separable from their utilitarian function.” The Court also noted that the buckles may be considered jewelry, which has consistently been found to be copyrightable.
Despite these decisions, there remained considerable uncertainty concerning how the separability test should be applied to fashion designs.
The Star Athletica decision
Varsity Brands, which derives most of its revenue from apparel sales, and which had revenues close to $150 million in 2001, brought suit against its competitor, Star Athletica, alleging copyright infringement of five of Varsity’s copyrighted designs, all of which were registered with the U.S. Copyright Office. These copyrighted designs consisted of arrangements of chevrons, lines and diagonals appearing on cheerleading uniforms.
A federal court in Cincinnati granted summary judgment in favor of Star Athletica, finding that Varsity’s designs are not copyrightable because they serve the function of identifying the clothing as cheerleading uniforms. The Court of Appeals for the Sixth Circuit reversed, finding that the designs incorporated into the uniforms could exist independently of the uniforms, and therefore, could be copyrightable.
With different separability tests articulated by various courts, the Supreme Court agreed to review the case, and articulated the following separability test, which will now apply nationwide:
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.
In applying this test, the Supreme Court determined that the arrangement of lines, chevrons, colors, shapes and stripes on Varsity’s cheerleading uniforms have pictorial, graphic or sculptural qualities. Further, the Court found that if these surface decorations were removed from the uniforms and applied to a different medium — such as a painter’s canvas — they would qualify as two-dimensional works of art.
Therefore, the Supreme Court found that Varsity’s design elements are separable, and established that if a design is independently copyrightable, then featuring the design on clothing does not weaken its copyrightability. To ensure its holding was clear, the Supreme Court noted that only the surface decorations of the uniforms are eligible for copyright protection, and the shape, cut, and dimensions of the cheerleading uniforms are not protectable because those aspects are not separable from the functional aspects of the uniforms. Additionally, the Court refrained from expressing an opinion with respect to whether Varsity’s separable design elements are sufficiently creative to warrant copyright protection.
Although the Star Athletica ruling leaves open the question of whether Varsity’s designs are sufficiently creative, it establishes that separable elements of a clothing design may be protected by copyright law. Given the limited legal protection afforded to fashion designs, this case may provide a valuable weapon for luxury brands to assert against the inevitable replications of their designs.
Edward Weisz is a member and Brianne Polito is an associate in the intellectual property practice of Cozen O'Connor, a full-service U.S. law firm.