Vedder Thinking | Articles When Clothing Is a Work of Art
March 23, 2017
In a 6–2 decision, the U.S. Supreme Court issued its decision in Star Athletica, L.L.C. v. Varsity Brands, Inc.1 in which it held that aspects of Varsity Brands Inc.’s cheerleading uniform designs are protectable under the U.S. Copyright Act. The decision attempts to clarify the law regarding the separability of copyrightable aspects of otherwise useful articles. Various tests have been applied by federal courts. In the world of fashion, clothing has often been found to be a useful article such that its design cannot be the subject of a copyright, aside from fabric design or a traditional pictorial or graphic design. This decision arguably expands copyright protection over clothing designs (or other useful articles) if the feature of the design “(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.”
The question faced by the Court in this case was “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?” Section 101 of the Copyright Act permits protection of the design of a useful article as a pictorial, graphic or sculptural work “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”2 Using the two-step test articulated in the decision, the Court held that Varsity Brands’ cheerleading uniform designs satisfied the test and were protectable under the Copyright Act. Without opining as to whether the design elements of the cheerleading uniforms qualified for copyright protection, the Court held that their incorporation into the useful article did not prevent copyright protection.
In assessing Varsity Brands’ cheerleading uniform designs, the Court stated that the arrangement of the colors, shapes, stripes and chevrons on the uniforms could be applied in another medium, such as on a painter’s canvas. On this basis and because the decorative features of the uniforms had pictorial, graphic or sculptural qualities, the designs of the uniforms could be protected under copyright law. It is likely that courts will continue to struggle with the separation of protectable elements from useful articles even with the test articulated in the decision. In the fashion industry, however, the decision is a welcomed expansion of protection over elements of clothing design. While the fashion industry will likely continue its efforts with Congress to pass more expansive legal protection over fashion designs, this decision opens the door to copyright infringement claims by design owners that traditionally relied more heavily on trademark- and design patent-based claims to protect its designs.
1 See full decision at: https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf
2 17 U.S.C. § 101.