Background

While useful articles are not protected under the Copyright Act, 17 U. S. C. § 101, pictorial, graphic, or sculptural features of the design of a useful article are eligible for copyright protection if those features "can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Id.

Despite what appears to be a clear statutory directive, application of this "separability standard" has proved difficult and unpredictable. An ornamental belt buckle, for instance, was found to possess independent originality and creativity separate and apart from the buckle's functional purpose sufficient to render it protectable under copyright law. See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980). However, the arrangement of decorative sequins, ruched satin, and tulle layers on a prom dress was found ineligible for copyright protection because the design choices underlying the details could not be said to be "conceptually separable" from utilitarian concerns. Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App'x 42, 45 (2d Cir. 2012). Rather, those design elements were used precisely to enhance the functionality of the dress as clothing for a special occasion. Id. Adding to this uncertainty, circuit courts had articulated at least six different tests to determine whether artistic features of useful articles are eligible for copyright protection. Pivot Point International, Inc. v. Charlene Prods., Inc., 372. F.3d 913, 923 (7th Cir. 2004).

The Supreme Court's Decision

Last week, in a highly anticipated decision, the Supreme Court returned to the two-part test articulated in the statute in Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866, 2017 WL 1066261 (U.S. Mar. 22, 2017). In its 6-2 decision, the Court elaborated on the test, stating:

We hold that 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.

Id. at *4.

The copyrights at issue were Varsity Brand's five registrations for two-dimensional designs—consisting of various lines, chevrons, and colorful shapes—appearing on its cheerleading uniforms. Varsity Brands sued rival cheerleader uniform maker Star Athletica for infringing its copyrights in these designs. Id. The District Court entered summary judgment for Star Athletica on the ground that the designs were not eligible for copyright protection. It reasoned that the designs could not be "physically or conceptually" separated from their utilitarian purpose of identifying the garments as cheerleading uniforms. The Sixth Circuit reversed. In its view, the designs were capable of existing independently because they could be incorporated onto the surface of different types of garments, or hung on the wall and framed as art. Id.

Taking a textualist approach to the dispute, Justice Thomas, writing for the majority, rejected previous physical and conceptual separability standards and based the Court's new test on the two requirements articulated in Section 101 of the Copyright Act. Star Athletica, 2017 WL 1066261, at *12. First, the statutory language "can be identified separately from" was interpreted by the Court as "can be perceived as a two- or three-dimensional work of art separate from the useful article." Second, the statutory language "and are capable of existing independently of, the utilitarian aspects of the article" was interpreted by the Court as "and 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." Id. at *7-8, citing 17 U. S. C. § 101.

Applying this test, the majority found the disputed designs to have separately identifiable pictorial, graphic, or sculptural qualities, and to be capable of independent existence if applied to another expressive medium—"for example, on a painter's canvas." Id. at *9-10. Justice Breyer's dissent, while not quibbling with the majority's test, disagreed entirely with its application. In the dissent's view, the designs submitted to the Copyright Office were merely pictures of cheerleading uniforms. Id. at *20 (Breyer, J., dissenting). The designs, therefore, could not be separated out from the useful article they depict. Id. at *21. Justice Ginsburg's concurrence disagreed that application of the separability test was even necessary, as many copyright practitioners expected, because the disputed designs were not designs of useful articles. Id. at *14 (Ginsburg, J., concurring). Instead, they were "pictorial or graphic works reproduced on useful articles." Id. She explained that the disputed designs were registered as two-dimensional artworks and had then been applied to the cheerleader uniforms and other clothing, including t-shirts and jackets. Justice Ginsburg's argument would follow that a Monet painting reproduced on a t-shirt or mug does not need to undergo the separability test because it was a work simply reproduced on a useful article.

Implications for Industry Stakeholders

A decision of this breadth raises several interesting questions. We explore and focus on the fashion industry below, but industrial design and nearly every field that combines design and utility will be similarly impacted.

"Killing Knock-offs": An Analysis

Interestingly, one topic the court's opinion fails to substantively address is the effect it may have on the so-called knock-off apparel industry. Justice Sotomayor called attention to this issue during the parties' October 31 oral argument, stating that if its argument prevailed, Varsity would be "killing knock-offs with copyright." Transcript of Oral Argument at 35, Star Athletica , 2017 WL 1066261 (2016). She continued, "[y]ou haven't been able to do it with trademark law. You haven't been able to do it with patent designs. We are now going to use copyright law to kill the knock-off industry. I don't know that that's bad. I'm just saying." Id.

Assuming that Varsity's win does harm the so-called knock-off industry (an assumption we will address below)—do we know that this is a good thing? The answer, it would seem, is unclear. The common perception among industry practitioners is that knock-off manufacturers harm the fashion industry, and that the industry's ever-increasing pace is a sign of damage done by these brands, many of which fall into the so-called fast fashion category of manufacturers producing inexpensive, quickly manufactured replicas of higher-priced designer items. From this perspective, while knockoffs do force designers to continually push out new material, this fast-paced production is not the product of an increase in creative output, but instead stems from a need to stay profitable in the wake of widespread counterfeit and knock-off sales. For these theorists, Star Athletica represents a win for fashion designers, who may now be able to successfully copyright, license out, and, if necessary, litigate a wider range of design elements incorporated into apparel.

On the other hand, some have argued that the fashion industry benefits from the knock-off industry, as its constant copying requires designers to continually innovate and change. Kal Raustiala and Christopher Sprigman, The Knockoff Economy: How Imitation Sparks Innovation, Oxford University Press (2012). From this perspective, Star Athletica may well operate to stifle and slow designer innovation by allowing designers to foreclose use of their designs, or designs similar to theirs, either altogether or unless a licensing fee is paid. As a result, echoing concerns noted by Justice Breyer in his dissent, these theorists speculate that de facto design monopolies allowed by Star Athletica may drive up consumer prices and decrease market choice over time.

With all this said, for better or for worse: could this decision actually "kill" knock-offs? Likely not. While this decision does formalize protection for certain design elements of clothing items, it also maintains the copyright status quo in that it does not lend any protection to the design of the garment itself (i.e., the cut of a sleeve, the shape of a top). Justice Thomas explicitly disclaimed any extension of this ruling to basic garment design, stating plainly that Varsity has "no right to prohibit any person from manufacturing a cheerleading uniform of identical shape, cut, and dimensions to the ones on which the decorations in this case appear." Star Athletica, 2017 WL 1066261, at *10. As such, though broadening design rights in some ways, the decision largely maintains the copyright status quo in the fashion industry as to shape, cut and fit. This is exemplified by Balmain's Spring 2015 plain white jumpsuit, picture here with its "knock-off" garment. Though Nasty Gal's "Frisco Inferno Jumpsuit" item shares a shape, cut, and color with its Balmain counterpart, it does not appear to utilize any separable design element in the garment.

One notable shift that we see in this decision, however, is the Court's ruling that design elements can still be protected as copyrightable aspects of a garment even where they have a function, or as stated by the Court, where they make the garment "more useful." Star Athletica, 2017 WL 1066261, at *11. The Court stated that as long as one could "imaginatively" separate a copyrightable 2D or 3D design from the useful article, that separated feature is protectable, even if its separation from the useful article renders the article less useful, or not useful at all: "the statute does not require the imagined remainder to be a fully functioning useful article at all, much less an equally useful one." Id. at *11. For example, Alexander Wang's Spring 2015 "sneaker dress" pictured here with its "knock-off" was made up of various mesh and stretch fabrics to approximate the effect of a running shoe. Arguably, pre-Star Athletica, the mesh was not physically or conceptually separable from the dress without affecting the dress's functional nature, and thus would likely not have been found "separable" (and thus protectable) under copyright law. However, post-Star Athletica, even if the mesh panels affect the breathability, fit, or otherwise "make[] the [dress] more useful," that would not necessarily foreclose protection. Star Athletica, 2017 WL 1066261, at *11. Now, as long as the patterns could be "imaginatively" separated from the apparel, and assuming they are otherwise copyrightable designs, they are protectable. Because one could easily imagine applying the Alexander Wang Sneaker Dress pattern to a canvas as a 2D graphic work, the dress may now be protectable in a way it previously was not.

Another interesting implication of this decision, and possibly that with the most underestimated implications, is the Court's explicit recognition that protectable apparel design elements can be 3D items as well. Though the cut or shape of a garment is still not protectable, creative protrusions from the garment may be. This may broaden the protection previously afforded to patterns and other 2D surface features to those that protrude from the item of clothing. These protruding items can now arguably be protectable as "sculptural" features of the apparel item, even if they improve the function of the garment. These items notably cannot, however, be useful articles in themselves. Star Athletica, 2017 WL 1066261, at *5-7.

While Star Athletica certainly represents a shift in the breadth of design protection within the apparel industry, its full impact will play out as designers, apparel producers, and others explore their increased rights and how they protect and enforce them.