In a highly anticipated decision, the Supreme Court of the United States held on March 22, 2017 that the “pictorial, graphic or sculptural features” of the “design of a useful article” can be protected by copyright under certain circumstances.
The case before the Court, Star Athletica, L.L.C. v. Varsity Brands, Inc., involved the alleged infringement by Star Athletica of several two-dimensional designs consisting of various lines, chevrons, and colorful shapes on cheerleading uniforms. Varsity Brands holds copyright registrations in its uniform designs and sued Star Athletica for copyright infringement of five particular designs. In 2014, a district court granted summary judgment in favor of Star Athletica that the copyrights were invalid. The district court held that the designs could not be separated from the useful article on which they were applied—the uniforms—and under United States Copyright law, useful articles are not awarded copyright protection. Varsity Brands appealed, and the Sixth Circuit Court of Appeals reversed the district court decision, but in doing so acknowledged that U.S. courts have not used a clear, consistent “separability” test in such cases.
Writing for the majority, Justice Thomas set forth the appropriate “separability” test when determining whether the pictorial, graphic or sculptural features of the design of a useful article are copyrightable. Under the Court’s separability test, a feature incorporated into the design of a useful article is eligible for copyright protection “only if the feature: (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.” Since the designs on the cheerleader uniforms could be imagined separately from the uniforms, the Court held they are protected by copyright.
The decision represents a win for the fashion industry, which up until now has enjoyed limited design protection for clothing since clothing is considered a useful article. As a result of this decision, it is safe to assume that more and more fashion designers will seek protection or bring enforcement/infringement claims on their designs by arguing that such designs (e.g. patterns, shapes, etc.) can be imagined separately from the useful article (e.g., the dress itself) on which they are included.
The Trademark, Copyright & Advertising Group at Locke Lord LLP is experienced at helping companies and clients with questions regarding the Star Athletica, L.L.C. v. Varsity Brands, Inc. decisions and the useful article doctrine generally, whether in the fashion industry or eleswhere.
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