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March 23rd, 2017
Supreme Court Supports Copyright Protection for Fashion and Industrial Designs
On March 22, 2017, the Supreme Court ruled in Star Athletica v. Varsity Brands that copyright law can protect designs on cheerleading uniforms. The Court set a clear, single test for copyrightability, resolving a split among various courts. The decision provides needed clarity and changes the tone of IP protection in the design industry: it can no longer be argued that US copyright law does not protect fashion and industrial design. Here's what you need to know.
Varsity Brands, Inc. ("Varsity"), a cheerleading uniform manufacturer, sued Star Athletica ("Star") for copyright infringement asserting that Star's cheerleading uniforms too closely resembled Varsity's registered designs. Under the Copyright Act, clothing is considered a "useful article," which is only entitled to copyright protection to the extent it incorporates pictorial, graphic, or sculptural ("PGS") features that are separately identifiable from their utilitarian aspects. A federal appeals court identified nine different tests from various courts and commentators and adopted a tenth "hybrid approach" to conceptual separability, ultimately determining that Varsity's designs were entitled to copyright protection. You can read more about that decision here.
The Supreme Court Decision
The Supreme Court did away with the many different and conflicting tests. The Court set one test, which sticks closely to the language of the Copyright Act: A feature of a useful article will be eligible for copyright protection if it (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 PGS work if it were imagined separately from the useful article. In other words, if the design feature were copyrightable had it not been affixed to a useful article, it is protectable even as part of the useful article. Under this rubric, when deciding whether a design is entitled to copyright protection, courts will no longer consider factors such as the marketability of the design feature, its physical separability from the useful article, and the intent of the author in creating the design.
Although the Court's test establishes the elements for copyrightability of features incorporated into the designs of useful articles, whether a particular design feature will qualify requires an individualized analysis. This will undoubtedly lead to broad and differing interpretations - and not all designs will qualify for protection. Also, the Court was clear that the shape, cut, or dimensions of fashion designs are still not protectable.
In her concurring opinion, Justice Ginsberg found the designs to be copyrightable, in part, because photos and illustrations of them were registered with the Copyright Office as standalone two-dimensional works of art. She opines that, if a design is capable of copyright registration, it should be protectable when applied to a useful article, i.e. clothing.
Today's decision provides a single, universal test to be used to determine the copyrightability of fashion items and other industrial designs. By holding that the designs in this case were conceptually separable from the useful article and independently copyrightable, the Supreme Court has endorsed the protection of fashion and other designs through copyright. Designers should continue to seek copyright registrations for creative designs, including pictures and illustrations of those features. Designers also need to be more careful when taking inspiration from others, now that past designs are more clearly protected.
If you have questions about the Star Athletica case, or about other fashion industry legal matters, please contact Craig Whitney at (212) 826 5583 or email@example.com, Rachel Kronman at (212) 705 4855 or firstname.lastname@example.org, or any member of the Fashion or Intellectual Property Groups at Frankfurt Kurnit.
Other Intellectual Property Law Alerts
Federal Appeals Court Weakens DMCA Safe Harbor Protection for Moderated Online Content
If you're an online publisher or other internet service provider ("ISP") that relies on moderators to police or curate user-generated comments or other content, your risk of liability for copyright infringement just increased.
May 2 2017
Does IP Law Protect Cake and Pastry Designs?
A chef who created a cake for President Obama's inauguration in 2013 recently tweeted a photograph showing two cakes. According to the chef, one was created for the Obama inauguration and the other was for an inaugural ball for President Trump. The Trump cake baker apparently admitted copying the Obama cake design (and stated the proceeds would be donated to a charity). So among the many legal questions raised by the new Trump administration, there lies an interesting IP question: can a baker, chef or restaurateur use intellectual property law to protect a cake or pastry design?
February 3 2017
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Here are our top ten resolutions to ensure your trademark portfolio is happy and healthy.
January 4 2017