The U.S. Supreme Court.

WASHINGTON — Fashion designers, concerned that the Supreme Court might “roll back the small amount of copyright protection” the industry currently has, are weighing in on a case before the high court involving cheerleader uniforms.

In an amicus curiae brief filed with the Supreme Court on Wednesday, a group of designers led by Susan Scafidi, founder and academic director of Fordham University’s Fashion Law Institute came out in support of Varsity Brands Inc. in an effort to fight for design protection.

This story first appeared in the September 23, 2016 issue of WWD. Subscribe Today.

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

The case, Star Athletica LLC v. Varsity Brands Inc., could provide much-needed clarity of design copyright rules, which several of the fashion designers who signed onto the brief have sought to protect and expand.

“They include designers who played key roles in the effort to persuade Congress to extend copyright protection to fashion designs or otherwise worked to raise awareness about the issue of intellectual property protection and fashion,” Scafidi said. “The intent of the brief is to prevent the opposite result, namely the danger that the Supreme Court might roll back the small amount of copyright protection the fashion industry already has for things like fabric prints and jewelry.”

The quest to expand copyright protections for fashion creations has been elusive in an industry plagued by design piracy. Fashion designers came close to advancing legislation in Congress that sought to put more teeth in copyright protection. Proenza Schouler’s McCollough and Hernandez, Rodriguez and Cornejo all lobbied for the design piracy legislation in 2011 and 2012 but the bill eventually stalled in Congress.

Now they are seeking to hold on to the limited protection they do have and support more clarity for design copyright rules in the courts.

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.

The case stems from the lawsuit filed by Varsity Brands against Star Athletica in 2010, accusing the company of infringing on several copyrighted designs on its cheerleader uniforms.

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.

“Despite the all-too-common mischaracterization of fashion as a sector of the economy wholly outside copyright, the fashion industry itself has an extensive history of using the limited patchwork of available protection to become a global leader in design,” the designers wrote in the brief filed Thursday.

They examined how “U.S. fashion, from emerging designers to established brands, has come to rely on separability as an integral part of its strategy for continued growth.”

“While the question presented in this case concerns the general copyright standard for protecting the separable elements of useful articles, the immediate subject of the dispute — fashion — is one that has long received disparate treatment within copyright law,” they argued in the brief.

The case played out in the lower courts in the different ways. 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 ruled that the designs were not copyrightable because the “aesthetic features of a cheerleading uniform merge with the functional purpose of the uniform.”

Varsity appealed the decision to the Sixth Circuit Court of Appeals, which reversed the lower court’s ruling. 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.

Scafidi, who was an expert witness for Varsity in the lower court case, has 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 the case. It is clear that the designs on the front of Varsity’s cheerleader uniforms are conceptually separable and therefore copyrightable, she has asserted.

“As amici can personally attest, the legal protection available to designers and fashion houses — for all its gaps and imperfections — is a significant part of business models and design strategies throughout the industry, and the recognition of the applicability of copyright to separable design features for over half a century has been particularly useful,” the brief stated. “Redefining this right such that copyright would not extend even to an easily identifiable two-dimensional design capable of existing in a wide range of media would have a decidedly negative impact on the fashion community, which has come to rely on whatever predictable protection it can find.”

The designer group argued in the brief that the U.S. fashion industry has undergone a major transformation in the past century, noting that the scope and importance of the industry’s creative works and copyright protection extends “far beyond high-priced luxury couture” to sportswear, footwear, accessories, jewelry, denim, athletic apparel, swimwear, lingerie, bridal and textiles.

“Although protection for fashion designs under U.S. law is limited, one factor contributing to the American fashion industry’s emergence as a global leader was the judicial recognition of copyright protection for certain elements of creative design starting in the 1950s,” the brief stated.

The industry has successfully relied on the “fundamental principles of physical and conceptual separability to persuade courts to recognize copyright protection for certain aspects of fashion design, including textile patterns, bridal lace designs, jewelry and artistic accessories, and separable elements of masks and costumes,” the brief stated.

The Copyright Office also “regularly engages in conceptual separability analysis,” according to the brief, and has issued “tens of thousands of registrations related to textiles and fashion.” In 2014 alone, textile designers sought copyright registration of over 4,700 works described as textiles, fabric prints or fabric designs, they stated.

The Sixth Circuit’s opinion noted that the designs in the case are “analogous to the series of copyrightable abstract designs by artist Piet Mondrian that have proven to be capable of replication in a wide array of media. Whether a dress replicates the design of a painting or a painting reproduces the conceptually separable design elements of a dress, the result is the same; the original design is included in the subject matter of copyright,” the designers argued in the brief. “Similarly, the fact that separable designs are capable of having aesthetic or informational utility does not disqualify them from copyright protection — to the contrary, works that embody expressive content are what copyright exists to protect.”

Oral arguments at the Supreme Court have been scheduled for Oct. 31.

The Varsity case is the second high-profile lawsuit before the Supreme Court to draw designer involvement. This past summer, designers including Calvin Klein and Paul Smith filed friend of the court briefs in Apple’s 2011 suit against Samsung that alleges the South Korean conglomerate’s smartphones infringed on the California company’s patented designs for the iPhone. In December 2015, a jury awarded Apple $548 million in the case, an award Samsung is appealing to the Supreme Court.

Mondrian Yves Saint Laurent Dress

One of Piet Mondrian’s colorblocked paintings from the 1920s; the YSL “Mondrian” colorblocked dress from 1965. 

Mondrian Cheerleaders

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

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