Why Creativity Needs IP Protection

10/13/2015
Imitation may be the sincerest form of flattery, but fashion designers understandably are dismayed when perfect replicas of their creative apparel are sold at deep discounts to lower-end markets soon after the originals first appear on the racks of high-end stores or on celebrities walking the red carpet.

Unsurprisingly, designers and their counsel think long and hard about how best to protect fashion designs from this kind of copying, including through registered trademarks (such as trade dress), design patents and copyrights.  But legal protections against infringing conduct can be difficult to sustain because clothing is a useful item that we all need.  No one should get an exclusive on shirts, pants and other clothes.  But designers might get intellectual property protection for the creative elements reflected in their designs.

In the world of copyright (generally speaking, perhaps the most easily obtained form of clothing design protection), the challenge in determining whether an article of clothing deserves legal protection against infringement lies in the distinction, if one can be found, between the particular design of the garment, and the purpose of the garment itself.  Or put another way, can you separate the creative features of an item from its utilitarian aspects?  If not, a finding of infringement is not possible even if copying occurred, because the copied design was not copyrightable to begin with.  But just how to go about answering that seemingly straightforward question has vexed lawyers, Congress (which has unsuccessfully tried many times to amend the Copyright Act to give statutory protection over novel fashion designs) and the federal courts. 

The Sixth Circuit, one of the country's 13 appellate courts whose decisions may be reviewed only by the U.S. Supreme Court, took this issue on in connection with several copyright-registered cheerleader uniform designs in the case Varsity Brands, Inc., et al. v. Star Athletica, LLC.  Varsity, the plaintiff, designs, markets and sells cheerleading apparel and accessories.  Its in-house designers sketch concepts that Varsity uses to produce cheerleaders' uniforms.  Star, the defendant, also markets and sells various sports uniforms, including cheerleading attire. 

In mid-August, a three-judge Sixth Circuit panel reversed the District Court (or trial court), but by a 2-1 vote.  The trial judge had determined that the designs themselves were not copyrightable because he could not distinguish between the creative aspects of the uniforms and the purpose of the uniform itself.  So if the designs were not copyrightable, then there could be no infringement and Varsity's case was dismissed.  The sole dissenting judge from the Sixth Circuit panel agreed with the trial judge.  This means that of the four federal judges who reviewed this case on the same law and facts, two could separate the creative and utilitarian elements (and held in favor of copyrightability), while the other two could not.  Such is the perplexing state of the law. 

Here's some background on the case up to this point. To demonstrate copyrightability, Varsity needed to show that the uniform designs are non-functional or at least that they contain design elements that are separable from the utilitarian traits of the garment.  The general "separability test" sounds simple enough: is the design in question that of a "useful article that incorporates pictorial, graphic or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspect of the useful article"?  But applying the test is a challenge to any judge. 

The trial judge applied the separability test, and concluded that the particular elements of the copyrighted graphic designs like "the colors, stripes, chevrons, and similar designs" make the garment "recognizable as a cheerleading uniform" that identifies the team to which its wearer belongs, and therefore are inseparable from the utilitarian aspect of the garment.  Put another way, "the aesthetic features of a cheerleading uniform merge with the functional purpose of the [cheerleading] uniform."  So, if they merge and cannot be separated, then the designs are deemed solely that of a useful item, and cannot be considered copyrightable. 

Varsity appealed to the Sixth Circuit.  The two majority opinion judges admitted that, when it comes to determining "separability," "courts have struggled mightily to formulate [such] a test …"  To prove its point, the court listed no fewer than nine different approaches to "separability" used by the different federal circuit courts around the country.  And after having discussed each of them to varying degrees, it then came up with its own "hybrid approach." 

When all was said and done, the Sixth Circuit found that the graphic features of the cheerleading designs are "more like fabric design" (the design imprinted on a fabric which is used to create a garment) than dress design (the shape, style, cut and size for converting the fabric into a finished garment).  And because the Copyright Act protects fabric designs, and not dress designs, the Sixth Circuit found that Varsity had established the copyrightability of its designs and could continue to pursue its case.  The Court's language is noteworthy because it implies a scale between fashion design on one end and dress design on the other, rather than a design being simply one or the other.  So if a design is "more like" one than the other, then it will be treated as if it were entirely that type of design, and its copyrightability determined accordingly.

In some ways, this possibility makes assessing copyrightability even more difficult, as degrees of emphasis one way or the other can determine a party's rights.  The dissenting judge on the panel seemed to agree, writing that "either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design."

Where does that leave the fashion designer? 
As unsettled as the law might seem, there still are certain best practices that can help avoid trouble or create a supporting framework in the event existing rights should be vindicated.

For example, designers should work with intellectual property counsel to build a protocol for determining whether copyright, trademark or patent registration might be a suitable form of federal protection for their creations, and if so, seek to obtain those registrations.

In addition, designers might consider using image search technology to see whether their most important works are appearing in on-line retail sites.  If a design is being used without license or other permission, intellectual property counsel can help determine the available options.

Also, designers should undertake the appropriate copyright, trademark and patent searches to see if their works might infringe on an already existing work.  This can be difficult to do, and is not a 100 percent guarantee of capturing everything out there, but can be very useful in avoiding infringement accusations. 

In the meantime, it seems unlikely Congress will succeed in clarifying the law, and it might be left to the Supreme Court to set the standard analytical tests all courts must use to determine copyrightability.  This may take a couple of more years at least, but this might lead to greater predictability when it comes to determining parties' rights and liabilities. 


Edward Maluf is a partner in the New York office of Seyfarth Shaw LLP, practicing in its Intellectual Property Practice Group. 
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