On October 31 2016 the Supreme Court heard oral argument in Varsity Brands v Star Athletica. The question involved the appropriate test to determine when a feature of a useful article is protectable under Section 101 of the Copyright Act. Section 101 provides that the design of a useful article shall be considered a copyrightable work only to the extent that the design incorporates "pictoral, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article".

Clothing is generally considered a "useful article", and thus is not in itself a copyrightable work. However, certain designs on or incorporated into clothing may be copyrightable.

Varsity Brands designs, manufactures and sells cheerleading uniforms with certain graphic designs and features, and has obtained copyright registrations for those graphic designs and features. It sued a competitor, Star Athletica, for copyright infringement for allegedly copying several of those registered designs for uniforms it marketed. A key initial question was whether the designs were properly copyrightable. The US Court of Appeals for the Sixth Circuit answered that question in the affirmative, finding that the arrangement of stripes, chevrons, colour blocks and zigzags on the cheerleading uniforms were conceptually separable from the underlying uniform. Star Athletica appealed.

Federal courts of appeals have applied numerous different tests for determining conceptual separability. It was thought that the Supreme Court had granted certiorari for the appeal in order to resolve the split. However, the court did not appear to be interested in that issue at all during oral argument.

Instead, the court spent most of the argument discussing analogies, such as a T-shirt with a printed image that looked like a tuxedo with a frilled shirt and bow tie. The printed image is a conceptually separable work protected by copyright law. 

Another analogy was to a fabric design with a camouflage pattern. Star Athletica argued that the camouflage pattern served a utilitarian purpose, as did the cheerleading uniform design. In addition to identifying the uniform's wearer as a cheerleader, the design also served to make the wear more attractive (ie, taller, slimmer and curvier). Observers have commented that if the court accepts this visual effects argument, the protection of fabric patterns and designs could be weakened.

Justice Sotomayor commented that the case appeared to be an attempt to kill off a competing "knock-off". She observed that it could not be done with trademark law or patent designs, and expressed concern about using copyright law to kill the "knock-off industry". Depending on the breadth of the court's ruling, it thus may have a significant effect on the fashion industry.

A mid-term decision is expected.

W Edward Ramage

This article first appeared in IAM. For further information please visit www.iam-media.com.