Copyright and Fashion Design Confusion: Let’s Move to Tennessee [1]

In Varsity Brands Inc. v. Star Athletica LLC[2] the court brings a new spin to on the bank shot to create in the United States a protectable zone of intellectual property rights for fashion designers.  Varsity is just another recent example of the fashion industry floundering for protection of design rights; it is also novel as an example of judicial activism in an area ripe, over ripe, for Congressional Legislation.

In a recent exploration[3] of the Adidas v Skechers “Stan Smith” case, the twisted shoe horning of trademark law to fashion design was discussed wherein it was shown that the true solution to addressing design knock off and copying is legislative action; the author suggested tracking the European Union (“EU”) Directive 98/71/EC of the European Parliament and of the Council of 13 October 1998 citing the failure of a United States solution. The Innovative Design Protection Act of 2012 (the “IDPA”) ( S.3523-112th Congress (2011-2012) introduced by Sen. Charles Schumer failed to pass Congress even though it was at best a compromise which would ineluctably have limited benefit to the fashion industry and its creative designers. Thus a gaping legislative hole continues to exist.

This intellectual property hole is due to the strict statutory limitation for the grant of copyright protection to apparel. The Copyright statute, 17 U.S.C. § 101 does not permit useful, functional articles be subject to copyright protection; clothing is both functional and useful and therefore the ability to decompile the aesthetic from the utilitarian has been considered a practical non-starter for protection of fashion designs, or for others the holy grail.

In Varsity the court jumped over decades of precedent manifested by at least twelve (12[4]) different tests to determine if a pictorial or graphic design can be identified separately from the utilitarian aspects of the article, in the instant case a cheerleader’s uniform. The Court decided to meld into a grand uniform “hybrid approach”[5] to determine if  “an artistic design is conceptually separable from the utilitarian aspects of the article.”  The Varsity court reversed a lower court’s conventional decision finding the designs on the cheerleader’s uniform, such as chevrons, were not inseparable and therefore there can be no copyright protection for the designs which are a part of the cheerleader’s uniform. If one pauses for a moment the holding belies credulity: one company now has the copyright on chevrons for cheerleader uniforms?[6]

Cutting through the “hybrid” analysis Varsity comes full circle to a very simplistic analysis: the designs on the cheerleaders uniforms are more like fabric designs than clothing designs and are therefore subject to copyright protection. Of course fabric designs are subject to protection but precedent holds “that clothing, in addition to covering the body, serves a ‘decorative function,’ so that decorative elements of clothing are generally ‘intrinsic’ to the overall function, rather than separable from it.”[7]  In other words clothing design is intrinsically useful by its function. Any other interpretation is a bald circumvention of the Copyright Law as written. However the Varsity  court blithely rejected  precedent since such precedent would make nearly “all artwork unprotectable.”

If the Varsity holds fashion designers concerned about design protection may well be served by moving their corporate headquarters to the Sixth Circuit of the United States Court of Appeals. A better result would be for Congress to do it’s a job an adopt appropriate legislation to remedy the problem of misappropriation of original designs.

[1] Or Kentucky, Michigan and Ohio all within the Sixth Circuit

[2] Westlaw citation 2015 WL 4934282; 115 USPQ 2nd 1773

[3] See Rube Goldberg Trademark Infringement: Adidas AG v Skechers USA Inc. — A lesson on why we need to learn from the EU by Leonard N. Budow

[4] See Westlaw citation 2015 WL 4934282, 15-16

[5] Hybrid melding the second and fourth circuit opinions.

[6] Note the Varsity court did not rule on the originality issue which would seemingly address this issue

[7] See Jovani Fashion, Ltd. v. Fiesta Fashions , Docket No. 12-598-cv, 2012 WL 4856412

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