How important is it for a designer to copyright their work? What creative aspects of clothing are protected?  

The Supreme Court could soon clarify what the Wall Street Journal called “an unsettled area in case law.” On Monday, SCOTUS may meet on Star Athletica, LLC v. Varsity Brands—a case on cheerleading uniforms where a U.S. Court of Appeals ruled clothing isn’t simply functional, and is subject to copyright protection.

Craig Whitney, Partner in the Frankfurt Kurnit Klein & Selz Litigation Group, who worked on a number of industry leading copyright and trademark cases, discussed the mechanics behind Star Athletica, LLC v. Varsity Brands, its potential impact moving forward, and what the SCOTUS conference on the case could mean.

“There is a difficult balance to strike between functional items and original, creative designs,” explained Whitney. “Many fashion items contain elements from both categories, but only the latter is generally protectable under copyright or trademark law.”

Just how important is it for a designer to copyright their work? Very important, according to Whitney, if the designer wants to protect him or herself from knock-off. First, by registering your copyright, you have taken an important step to establishing that you have protectable rights in your design.  Second, in addition to registration being a pre-requisite to enforcing your copyright in court, registering your design before infringement provides benefits, including the option of seeking statutory damages and the possibility of recovering attorneys’ fees.

“It is pretty clear that original patterns or pictorial designs used on clothing are copyrightable, while utilitarian aspects of clothing designs, such as the particular manner in which a garment is tailored or the placement of its pockets, are not,” he said. “The gray area of copyrightability lies in between.”

Varsity Brands sued Star Athletica for copyright infringement on the grounds that Star’s cheerleading uniforms too closely resembled Varsity’s registered designs. The trial court found that Varsity’s designs were not copyrightable because the designs were not separable from the utilitarian function of a cheerleading uniform. On appeal, the Sixth Circuit adopted a “hybrid” approach to conceptual separability to determine whether the pictorial, graphic, or sculptural elements of the uniform were identifiable separately from the uniform itself.  According to Whitney, the court found that these elements did not enhance the uniform’s capacity to function as a clothing item, and therefore were copyrightable.

“The case law in this area is a mess,” he said. “There are now at least 10 different approaches used in courts around the country for determining whether a design is conceptually separable from a useful article. The decision in this case was not particularly dramatic, but given the many competing tests for conceptual separability, including within the same circuit, it would be helpful to achieve clarity and consistency on an important aspect of copyright law.”

Additionally, a less discussed aspect of this case—although no less important—is the proper deference to afford the Copyright Office’s determination that a design is protectable under the Copyright Act.  A determination on this point by the Supreme Court could impact the significance of obtaining a copyright registration.

According to Whitney, if the Court grants the cert petition, then we may ultimately see some uniformity in the law on these issues.  Otherwise, the fashion industry (and their counsel) will continue to rely on a tapestry of conflicting decisions and tests to protect their designs.

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