Decorative Elements of Clothing are Eligible for Copyright Protection

by Seth I. Appel (Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, U.S.A.)

The U.S. Supreme Court dove into the muddy waters of copyright in clothing designs in Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. __ (2017), Here, the Supreme Court held that designs on Varsity Brands’ cheerleading uniforms may be protected, even though the uniforms themselves are non-copyrightable useful articles.

Clothing generally is not subject to copyright in the United States. The U.S. Copyright Act protects “pictorial, graphic, and sculptural works,” but it does not protect “useful articles” such as clothing. However, under the separability doctrine, designs incorporated into a useful article are eligible for copyright to the extent that they “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Thus, in the classic case of Mazer v. Stein, 347 U.S. 949 (1954), the Supreme Court held that the plaintiff’s statuettes of dancing figures were copyrightable, even though they were intended as bases for table lamps.

Against this backdrop, Varsity Brands, a leading producer of cheerleading uniforms, sued a competitor, Star Athletica, for copying five of its patterns:

Seth I. Appel

The trial court ruled in favor of the defendant because it determined that the designs could not be physically or conceptually separated from the “utilitarian function” of the uniforms.

The Supreme Court held that the designs were separable and ruled in favor of Varsity Brands. It announced a two-part test for determining whether a feature of a useful article may be subject to copyright. First, the design must be capable of being “perceived as a two- or three-dimensional work of art separate from the useful article.” Second, the design must “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.”

Under this test, Varsity Brands’ “surface decorations” – arrangements of colors, shapes, stripes and chevrons – are separable and merit protection, so long as they meet the originality threshold required of all copyrighted works.

It was irrelevant whether the designs could be physically separated from the uniforms. Under the Copyright Act, the Court explained, “separability is a conceptual undertaking.”

The Court made clear that it was not extending copyright to clothing generally. Even if the surface designs are copyrightable, Varsity Brands has “no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions.”

The Court found it insignificant that imaginatively removing the designs from the uniforms and placing them in another medium, such as a canvas, would retain the outline of a cheerleading uniform. “Just as two-dimensional fine art corresponds to the shape of the canvas on which it is painted,” the Court explained, “two-dimensional applied art correlates to the contours of the article on which it is applied.”

The United States, unlike some other countries, does not have a law specifically protecting fashion designs. Over the past decade, Congress has considered – and rejected – a number of bills in this area, most recently the Innovative Design Protection Act of 2012. Many in the fashion industry applauded the Varsity Brands decision, which confirms that clothing designers in the U.S. can rely on copyright to protect certain features of their designs.