On 31 October 2016, the U.S. Supreme Court heard arguments in the ongoing dispute between Star Athletica LLC and Varsity Brands Inc, two major designers and manufacturers of cheerleading uniforms. In what could be considered a bizarre mash up of early 2000s films “Bring it On!” and “Legally Blonde”, the two companies are involved in a stoush as to whether or not the two-dimensional designs of coloured stripes and zig-zags that are applied to cheerleading uniforms can be protected under US copyright law. My U.S. colleagues John Cotter and Shamus Hyland previously discussed the Sixth Circuit Court of Appeal’s decision in this matter here.

It will come as no surprise to readers that U.S. and Australian laws differ in many respects and this is particularly the case when it comes to copyright and designs laws.

In Australia, fashion designers may have recourse to the Designs Act 2003 (Cth) and/or the Copyright Act 1968 (Cth) depending on whether or not they are looking to protect two-dimensional (prints, images etc.) or three-dimensional (cut, shape, fit etc.) designs and how they intend to exploit the designs.The Designs Act provides a system for designers to register new and distinctive designs (when compared to the prior art base of designs publicly used in Australia or published in a document within or outside Australia). Registered owners of registered designs are afforded a number of exclusive rights to exploit the designs for an initial period of five years.

While the Copyright Act provides some protection to designs as “artistic works”, it is important to note that where a design has been applied industrially (i.e. to 50 or more articles) designers are not able to rely on the Copyright Act for protection in relation to embodiments of the work in a product manufactured or sold by a third party. Therefore, the most practical method to protect designs is to ensure that they are registered with IP Australia prior to being used or published.

In the U.S., there is no equivalent to the Designs Act (despite a number of attempts to introduce such laws, the latest being in 2011). As such, fashion designers are offered limited protection under the copyright provisions contained in Title 17 of the United States Code.

The definition of “Pictorial, graphic and sculptural works” under 17 U.S.C. §101 states that

Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work 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 concept of separating the utilitarian aspects from the article has meant that there is a body of case law in the US that provides that the cut, shape and fit of a garment is not subject to copyright protection. The Supreme Court has been called upon to consider what the appropriate test is to determine whether a feature of a “useful article” is protectable under 17 U.S.C. §101. The arguments in this case have centred on whether the arrangement of stripes, zig-zags and other visual design elements have utilitarian or expressive functions.

Cheerleading is big business in the U.S., both in its own right and as an adjunct to other sports, so it is not surprising that this matter has progressed through to a Supreme Court appeal.

The full transcript of oral arguments in Star Athletica LLC v Varsity Brands Inc.(No. 15-866) is available here. A judgment in the matter is not expected before mid 2017 and will be eagerly awaited by both intellectual property lawyers and the fashion industry. The Supreme Court’s decision will ultimately impact on the protections available to designers in the US and may serve as the driving force behind another attempt to pass design rights laws.