The U.S. Supreme Court.

WASHINGTON Sending a shiver of worry through the fashion world, the Supreme Court on Monday expressed some skepticism about copyright protection for designs.

The justices weighed the legal question of what the appropriate test should be to determine when a feature of a piece of clothing is protectable under the Copyright Act.

Cheerleader uniforms were at the center of the debate in the case before the High Court — Star Athletica LLC v. Varsity Brands Inc. The court’s decision could have far-reaching implications for the fashion world, which is seeking clarity on design copyright rules.

Mondrian Cheerleaders

An Australian cheerleading team photographed in 1988 wearing Mondrian-inspired uniforms. 

A group of fashion designers and industry executives led by Susan Scafidi, founder and academic director of Fordham University’s Fashion Law Institute, have filed an amicus curiae brief in the case in support of Varsity Brands in an effort to fight for design protection.

The designers include Jack McCollough and Lazaro Hernandez of Proenza SchoulerNarciso Rodriguez; Maria Cornejo, founder and creative director, and Marysia Woroniecka, president, of Zero + Maria Cornejo; Jeffrey Banks; Barry Kieselstein-Cord; Melissa Joy Manning; Keanan Duffty, and Nathalie Doucet, founder of Arts of Fashion Foundation.

But if Monday’s oral arguments are any indication, some justices seemed skeptical that copyright protection extended to the two-dimensional designs applied to fabric if they are also deemed functional in the utilitarian articles.

A few justices repeatedly pointed to the example of camouflage in military uniforms, noting that camouflage serves a function — for example, to let the soldier hide in the woods — and cannot be separated from the uniform itself.

John Bursch, Star Athletica’s attorney, argued that Congress did not “intend to grant a century-long copyright monopoly in cheerleader uniform design.”

He said Congress made clear that two-dimensional and three-dimensional designs must be “analyzed for separability.”

In the case of Varsity’s cheerleader uniforms, he argued, the copyrighted designs served the function of an “optical illusion,“ making the cheerleaders appear taller or slimmer and added to the useful article’s utilitarian function.

“The purpose of having a separability test under [the statute] is to make sure that anything that enhances in any way the functionality of a useful article is not within the subject matter of copyright,” Bursch argued. “Our position is that they cannot then take that image and prohibit us from making the actual three-dimensional uniform. And the reason for that [under the law] is because the design neither can be identified separately, nor can exist independently, which are the statutory requirements of the ‘utilitarian aspects’ of the cheerleader uniform.”

Justice Elena Kagan said: “The reason why camouflage is such a good example for your side is that camouflage actually — we can understand it as having a utilitarian function that is different from simply conveying information and it is different from simply making something appear a certain way…In other words, the utilitarian function that camouflage has is to hide you in the woods.”

Bursch said Star Athletica does not contest that Varsity has the copyrights of the designs and wouldn’t contest that someone could in some cases also copyright a camouflage design.

“But that copyright doesn’t extend to prevent you from making the useful article depicted. That’s where the line stops,” he said.

William Jay, the attorney for Varsity, argued that the graphic designs covered by the copyrights, including the striped chevrons and color blocks, are separable from the useful article.

But Chief Justice John Roberts peppered him with a long line of questions.

“If you take them off the useful article, you have whatever color the fabric is, a white dress. If you look at somebody in the white dress, you don’t say, oh, that’s a cheerleader,” Roberts said.

Jay argued that in Star’s own catalogue there were “examples of uniforms that have neither stripes nor chevrons nor color blocks. Those simply aren’t essential to identifying a cheerleader as a cheerleader, even if identifying were a function that’s cognizable under the statute, which it is not. Ultimately, the design can be taken and put on other articles.”

He said he resisted the premise that “these five particular designs — striped chevrons and color blocks — are what make a cheerleading uniform a cheerleading uniform.”

Roberts seized on Star Athletica’s argument: “Because it is the design that makes the dress a cheerleading uniform, you can’t separate; you can’t copyright the design applied to that functional article.”

The quest to expand copyright protections for fashion creations has been elusive in an industry plagued by design piracy. They are seeking to hold on to the limited protection they have and support more clarity for design copyright rules in the courts.

Justice Sonia Sotomayor proclaimed: “You’re killing knock-offs with copyrights. You haven’t been able to do it with trademark law. You haven’t been able to do it with patent designs. We are now going to use copyright law to kill the knock-off industry. I don’t know that that’s bad. I’m just saying.”

“For a hundred and more than that years, the fashion industry has not enjoyed copyright protection,” said Justice Stephen Breyer. “It’s an industry on the women’s side, I believe, $225 billion, at least, worth of clothes are sold every year. If suddenly in this case we say that dresses are copyrightable and they are because every one of them has some design, perhaps we’ll double the price of women’s clothes.”

Scafidi said she was concerned about the court’s questioning on Monday.

“The court’s focus today on functionality rather than a test for conceptual separability” could have potentially been a benefit for Star Athletica and “unwelcome” news to Varsity and the fashion supporters.

“Functionality is the bar to copyright protection that prevents most fashion designs from being registered,” she said. “Over a century ago, the Copyright Office decided to categorize even the most fanciful clothing as merely functional, apart from conceptually separable elements, and the fashion industry has been fighting for some kind of protection against copying ever since.

“Today’s questions from the court raise the specter of the court attributing copyright functionality to military camouflage patterns, to surface designs that have a visual slimming or curve-enhancing effect when worn or to clothing that indicates the wearer is a cheerleader,” Scafidi added. “This line of thinking could lead the justices to deny protection to the designs on cheerleader uniforms at issue, and by extension to many other surface designs on clothing. It is also in my opinion fundamentally misguided.”

The U.S. Solicitor General’s office sided with Varsity in the case. The justices will issue a decision in the case by next summer.

It is already a case that has divided lower courts. 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 uniforms and warm-ups, and accused Star Athletica of infringing on those designs, alleging 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, agreeing that Varsity’s copyrights were invalid because the elements weren’t separable from the utilitarian function of a cheerleading uniform.

Varsity appealed the decision to the Sixth Circuit Court of Appeals, which reversed the lower court’s ruling in August. The appeals court, noting that the copyright law protects fabric design and (typically) not dress design, ruled that Varsity’s designs were “more like fabric design than dress design” and therefore protectable. The appeals court ruled that the arrangement of stripes, chevrons, zigzags and color blocking are separate from the utilitarian aspects of the cheerleading uniform’s design.

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 and distinguish between copyrightable designs and industrial designs that are not protectable.

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