A recent U.S. Supreme Court copyright decision analyzing cheerleader uniforms may have a profound impact on retailers, and on the fashion industry in particular. On March 22, 2017, the Supreme Court held in Star Athletica, L.L.C. v. Varsity Brands, Inc. that original design elements that are separable from the “useful article” upon which they are affixed may be eligible for copyright protection if independently copyrightable. Fabric designs have received copyright protection for years, but apparel designs have traditionally been protected only by design patents and trade dress. The Supreme Court’s decision may now provide increased intellectual property protection to the fashion industry in the form of copyright protection, which is relatively quicker and less expensive to obtain, and provides enforcement advantages. This may embolden designers to increase their enforcement efforts and, in turn, their prices for retail goods incorporating copyrighted designs.

Form Does Not Necessarily Follow Function

Section 101 of the Copyright Act defines a “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”  The design of a “useful article” is copyrightable “only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

The Supreme Court sought to clarify this concept, which has historically confused courts, by providing a two-part test for determining whether the design of a “useful article” is copyrightable:

an artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article.

Is a Cheerleader Uniform Copyrightable?

No, but the artistic features that are separable from the uniform might be.  To illustrate, the cheerleader uniforms analyzed by the Supreme Court are depicted below:

Writing for the majority, Justice Thomas applied the two-part test to the uniforms’ “surface decorations,” comprising the colors, shapes, stripes and chevrons, as follows:

First, one can identify the decorations as features having pictorial, graphic, or sculptural qualities. Second, if the arrangement of colors, shapes, stripes, and chevrons on the surface of the cheerleading uniforms were separated from the uniform and applied in another medium—for example, on a painter’s canvas—they would qualify as “two-dimensional . . . works of . . . art,” §101. And imaginatively removing the surface decorations from the uniforms and applying them in another medium would not replicate the uniform itself.

Although Justice Thomas called this analysis “straightforward,” the inherently subjective nature of the issue is likely to cause debate and litigation for years to come. Indeed, the dissenting opinion observed that separating the surface decorations still yields an unprotectable cheerleader uniform.

Impact on the Retail and Fashion Industries

The implications of this case for the retail and fashion industries may be significant. Copyright registrations are relatively quick and inexpensive to obtain as compared to design patents or trade dress protection. Additionally, copyright registrations may entitle the owner to statutory damages and attorneys’ fees for infringement while trade dress and design patents require the owner to prove damages, and permit fee shifting only in “exceptional cases.”

This could potentially drive up prices in the retail market, as designers may now wield an extra layer of intellectual property rights and more aggressively police their designs. For example, trends in the fashion industry often incorporate basic design schemes that have traditionally been considered unprotectable design elements. Although some such designs may lack the originality required for copyright protection, smaller companies may not have the resources to defend copyright infringement claims asserted by much larger design firms. In fact, eight days after the Supreme Court’s decision, Puma sued Forever 21 in California federal court for trade dress and design patent infringement, as well as copyright infringement, for the design of shoes, citing the Supreme Court’s opinion.

Now more than ever, designers should consider the scope of protection afforded not only to their own designs, but to those of their competitors.