U.S. Supreme Court Backs Copyrights for Cheerleading Uniforms

• High court says designs, separable from uniforms, can get copyright protection

• Cheerleading uniform case returns to trial court to determine if there’s infringement

BY: GREG STOHR, SUSAN DECKER AND ANANDASHANKAR MAZUMDAR

The U.S. Supreme Court upheld an apparel company’s copyrights on its cheerleading outfits in a ruling that bolsters legal protections for pictures and graphic designs (Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., 3/22/17).

The 6-2 ruling is a victory for Varsity Brands LLC, the world’s largest cheerleading-uniform company. It lets the company press ahead with claims that smaller rival Star Athletica LLC copied five proprietary designs.

The case tested the limits of copyright protection for clothing, furniture and other items that can have both functional and distinctive ornamental aspects.

Clothing designs themselves are not generally protected by U.S. intellectual property law because clothes are considered useful objects. In the U.S., fashion designers mostly rely on trademark law to prevent others from knocking off their brand names and logos. But concerns over IP protections for designs have intensified since the evolution of a “fast fashion” industry that can quickly copy and manufacture clothing in large batches.

Now, the high court ruling gives designers “another means of protecting their ornamental designs that are affixed on useful articles like clothing,” Jeanne Gills, an intellectual property lawyer with Foley & Lardner in Chicago, said.

Under federal law, a design can be copyrighted if it is separable from a product’s utilitarian aspects. Justice Clarence Thomas, writing for the majority, said the uniform designs met the test of being “able to exist as its own pictorial, graphic, or sculptural work” that’s eligible for copyright protection when separated from the utilitarian article.

Justice Stephen Breyer disagreed, saying Varsity was seeking protection for what amounted to little more than pictures of cheerleading uniforms.

The case now returns to the trial court, where Star Athletica won a ruling that Varsity’s designs were not separable from the uniforms. That ruling was overturned by a federal appeals court that found Varsity’s lines, zigzags and braids conceptually separate from the uniforms’ functional attributes, making the designs eligible for copyright protection.

IP lawyer Joshua M. Dalton of Morgan, Lewis & Bockius LLP, Boston, told Bloomberg BNA that the case will now look like an ordinary copyright infringement case, with Star Athletica trying to overcome the presumption that Varsity’s designs are original and creative enough to be protected. It will also get to argue that its own designs are not similar enough to be infringing.

Chevrons, Stripes & Fast Fashion.

Ronald Abramson, an IP litigator with Lewis Baach PLLC, New York, was critical of the ruling, saying the “Supreme Court just did what Congress would not: extend copyright protection to clothing designs.”

Abramson told Bloomberg BNA in an email message that the ruling “has broken a key limitation on copyright protection, and this will come back to haunt the courts” in areas like architecture and computer software, “where design and functionality are often intertwined and the designs can be highly 'free form.’”

But Elizabeth G. Kurpis, a fashion lawyer with Mintz, levin, Cohn, Ferris, Glovsky & Popeo PC, New York, told Bloomberg BNA that the ruling might give designers some leverage against fast fashion.

“Elements of the designs 'knocked off’ from high-end luxury designers that may not have been deemed copyrightable (or were questionably so) may in actuality be protected,” Kurpis said.

Both Breyer and Justice Anthony Kennedy, while agreeing with Thomas’s analysis of the law, disagreed with the result. Breyer noted that Congress has declined to provide broad copyright protection to the fashion industry, though textile patterns are eligible.

“As Varsity would have it, it would prevent its competitors from making useful three-dimensional cheerleader uniforms by submitting plainly unoriginal chevrons and stripes as cut and arranged on a useful article,” Breyer wrote. “But with that cut and arrangement, the resulting pictures on which Varsity seeks protection do not simply depict designs. They depict clothing.”

Thomas, though, said the fact that the design follows the contours of a cheerleading uniform is not a bar to copyright. If a design were etched or painted on a guitar and used for an album cover, it would still look like a guitar, “but the image on the cover does not 'replicate’ the guitar as a useful article,” he said.

The ruling is simply a “mirror image” of an established law that protects graphics, sculptures or other works of art that are subsequently applied to a useful item, Thomas said.

“The two provisions make clear that copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as freestanding art or as features of useful articles,” he said.

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