cheerleader uniform

An impending opinion from the U.S. Supreme Court could leave cheerleaders' uniforms providing the fashion industry with tighter design copyright protection or eliminating the possibility altogether.

Shutterstock / bikeriderlondon

WASHINGTON — Give me a C. Give me an O. Give me a P….Cheerleaders’ uniforms may be about to provide the fashion industry with some much-needed clarity of design copyright rules as a result of a case about to go before the Supreme Court.

The court on Monday agreed to hear a case involving Star Athletica LLC and Varsity Brands Inc. Star Athletica petitioned the high court in January asking the justices to weigh in on the appropriate test to determine when a feature of a “useful article is protectable” under the Copyright Act.

Varsity Brands sued Star Athletica in 2010, accusing the company of infringing on several copyrighted designs on its cheerleader uniforms. Varsity said it had five registered copyrights for multiple graphic designs, including stripes, color blocks and chevrons, that appeared on its cheerleading uniforms and warm-ups, and accused Star Athletica of infringing on those designs, claiming they were “substantially similar” to the designs for which Varsity held valid copyrights.

Star Athletica asserted that Varsity’s copyrights were invalid because the designs at issue were “unprotectable” designs of useful articles and they were not physically or conceptually separable from the uniforms.

The District Court for the Western District of Tennessee in Memphis ruled in favor of Star Athletica, determining that Varsity’s copyrights were invalid because the design elements were not physically or conceptually separable from the utilitarian function of a cheerleading uniform.

“The court held that the aesthetic features of a cheerleading uniform merge with the functional purpose of the uniform,” and therefore were not copyrightable, according to court documents.

Varsity appealed the decision to the Sixth Circuit Court of Appeals, which reversed the lower court’s ruling in August. The appeals court said the law protects fabric design and not dress design, and ruled that Varsity’s designs were “more like fabric design than dress design” and therefore protectable.

The concept at the heart of the case is known as “conceptual separability,” according to legal experts. Generally speaking, under the Copyright Act, “useful articles” cannot be copyrighted, but components of an item that can be identified as being separate from or existing independently of the utilitarian aspects of an article of  clothing can be.

The circuit courts, Copyright Office and academics have proposed at least nine different tests to analyze this “separability” of components of an article.

“This case involves the most vexing, unresolved question in copyright law: how to determine whether a feature of a useful article — such as a garment or piece of furniture — is conceptually separable from the article and thus protectable,” Star Athletica said in its writ for certiorari.

Star Athletica asserted that the Sixth Circuit’s majority decision “exacerbates a circuit split and defeats Congress’ well-recognized denial of copyright protection to garment designs or uniforms, despite lobbying by the garment-design industry for more than a century.”

“The majority [in the appeals court] held that respondent Varsity can assert copyright in the stripes, chevrons and color blocks incorporated into a cheerleader uniform because these features are purely aesthetic. Other circuits hold that uniform designs and dress features are not eligible for copyright protection.

“As a result, a garment’s protectability now turns entirely on the circuit where the copyright action is litigated,” Star Athletica said.

In its response to the Star Athletica’s petition, Varsity argued that the Copyright Act provides protection for original “pictorial, graphic and sculptural works” and that designs of “useful articles” fall within this category.

Varsity said it has “registered copyrights for several two-dimensional graphic designs that they incorporate onto athletic apparel. The Sixth Circuit held that these designs were separable from the utilitarian aspects of the clothing on which they appear and therefore are eligible for copyright protection.”

Varsity argued that there is no split in the Circuit Court of Appeals’ decisions and therefore said the Supreme Court should not review the case.

The Supreme Court will now have an opportunity to weigh in on the apparent legal ambiguity in separating out the artistic and design elements of a useful article that are copyrightable from those that are non-copyrightable.

Susan Scafidi, director of Fordham University’s Fashion Law Institute, said other courts have laid out nine tests to determine what it means for something to be “conceptually separable” and argued that she does not believe there is a gray area in this case. Scafidi, who was an expert witness for Varsity, argued that it is clear that the designs on the front of Varsity’s cheerleader uniforms are conceptually separable and therefore copyrightable.

“My speculation is the court is granting cert just to give us a clear statement of the principal of conceptual separability, to give a single unified clear test that everyone out there can then apply,” Scafidi said.

Craig Whitney, an attorney and litigation group partner with Frankfurt Kurnit Klein & Selz, said: “Today’s decision by the Supreme Court to hear arguments in Star Athletica LLC v. Varsity Brands could set the stage for far greater clarity in copyright law — particularly in the fashion industry.

“There are currently at least 10 different tests for conceptual separability that could be used to determine whether a feature of an otherwise uncopyrightable ‘useful article’ is protectable under the Copyright Act,” Whitney said. “A decision from the Supreme Court on a uniform approach would hopefully provide needed clarity and consistency on this important aspect of copyright law.”

Scafidi said the Supreme Court’s decision in the case could have implications for the fashion industry.

“In general under U.S. copyright law, there is very little protection for fashion,” Scafidi said. “It is something the industry has lamented, has tried to change and has not been successful in changing, but we do have small slivers of protection for things that are conceptually separable, including fabric prints.”

If the Supreme Court rules in favor of Star Athletica, Scafidi said it would be a “setback” for the industry in the area of copyright protection.

“If the court says that these [Varsity’s designs] are not conceptually separable designs, then we get a lot of confusion as to whether the designers currently relying on things like original fabric prints, lace patterns and woven jacquard patterns can still do so,” Scafidi said. “It would certainly be a step back for the level of protection afforded to the industry.”

If the Supreme Court upholds the appeals court ruling in favor of Varsity, she doesn’t expect much to change for the fashion industry “except that we can rely with a little more certainty on the protections we have had for 50 years,” she said.

“For the fashion industry, assuming that the basic decision in this particular controversy [relating to conceptual separability] remains the same, then all we’ve done is affirm the fashion industry’s ability to rely on a narrow aspect of copyright law and conceptual separability for two-dimensional designs,” Scafidi said.

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