Is Your Aloha Shirt Design Copyrightable? The U.S. Supreme Court Set to Decide Whether Garment Designs Are Protectable
Last week, the U.S. Supreme Court announced that it will address what was described by the petitioners in the case as “the single most vexing, unresolved question in all of copyright”; that is, whether apparel can be protected by copyright law.
U.S. copyright law protects “original works of authorship fixed in any tangible medium of expression.” For a work to be considered “original”, it must be created independently by its author and must, to some minimal degree, be creative. Presumably, clothing designs would fall under this ambit of protection. However, fashion designs have traditionally received very limited protection under U.S. copyright law.
Why? Because copyright protection does not extend to items that serve a utilitarian function.
The only way for the design of a garment to acquire copyright protection is if the design can be identified separately from, and is capable of existing independently of, the utilitarian aspects of the article.
In Varsity Brands, Inc. v. Star Athletica, LLC, the plaintiff Varsity, a company that designs and manufactures athletic apparel, received several copyright registrations for much of its “two-dimensional artwork” for many of its cheerleading outfit designs. Varsity alleged that defendant Star infringed on its copyright by selling cheerleading uniforms that were alleged to be substantial similar to Varsity’s designs.
Two examples of Varsity’s copyrighted designs.
In response, at summary judgment, Star claimed that Varsity did not have a valid copyright in the designs because: (1) Varsity’s designs are for useful articles and therefore not copyrightable; and (2) the pictorial, graphic, or sculptural elements of Varsity’s designs were not physically or conceptually separable from the uniforms.
The U.S. District Court for the Western District of Tennessee granted summary judgment in favor of the defendant Star. The Court concluded that Varsity’s designs were not protectable because the graphic elements were not separable from the utilitarian function of a cheerleading uniform. Specifically, the court held that the “colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular,” make the garment they appear on “recognizable as a cheerleading uniform,” and therefore the aesthetic features merged with the functional purpose of the article.
Sixth Circuit Court of Appeal Overturned the District Court’s Ruling 2-1
On appeal, the Sixth Circuit overturned the district court’s ruling finding that the cheerleading uniform designs were capable of copyright protection. The Court set out a five-part test to determine whether the designs were protectable, asking:
- Is the design a pictorial, graphic, or sculptural work? (i.e. is it the type of work that is protected under the U.S. Copyright Act?)
- If so, then is it “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information?” (i.e. is the design useful?)
- What are the utilitarian aspects of the useful article?
- Can the viewer identify pictorial, graphic, or sculptural features separate from the utilitarian aspects of the article?
- If so, can the pictorial, graphic, or sculptural features of the design exist independently of the utilitarian aspects of the useful article?
The Sixth Circuit found that the first two factors were easily satisfied. The designs were two-dimensional artistic works that had an intrinsic utilitarian function that was not merely to portray the appearance of the article. The court also found that cheerleading uniforms have an intrinsic utilitarian function because it is used to “cover the body, wick away moisture, and withstand the rigors of athletic movements.”
The last two questions of the court’s analysis looked at whether the artistic design of the clothing could be separated from its utilitarian function. In other words, whether the uniform’s design could be separated from the uniform’s function of covering the body, wicking away moisture and withstanding the rigors of athletic movement.
In answering the fourth question, the court found that it could identify the graphic features of Varsity’s designs in the arrangement of stripes, chevron patterns, and color-blocking. The court wrote: “A plain white cheerleading top and plain white skirt still cover the body and permit the wearer to cheer, jump, kick, and flip”. In other words, the graphic designs could be identified separately from the utilitarian function of the cheerleading uniform.
In answering question five, the court found that the designs – stripes, chevrons, and zigzags – could, in fact, “exist independently” of the utilitarian aspects of the uniform. The court relied on evidence that Varsity’s designers could sketch their designs and arrange them on various items of clothing, showing that the designs were “transferable to articles other than the traditional cheerleading uniform.” The court noted that, “nothing (save perhaps good taste) prevents Varsity from printing or painting its designs, framing them, and hanging the resulting prints on the wall as art.”
Finding all five factors were met, the Sixth Circuit ruled that the designs were subject to copyright protection because “the arrangement of stripes, chevrons, color blocks, and zigzags [were] wholly unnecessary to the performance of the garment’s ability to cover the body, permit free movement, and wick moisture.”
The U.S. Supreme Court to Clarify the “Function” of a Design
The dissenting judge in the Sixth Circuit, Judge McKeague, argued that the majority had incorrectly concluded that the designs were conceptually separable from the function of the uniforms and urged for a narrower approach to the understanding of “function.” McKeague wrote that “without stripes, braids, and chevrons, we are left with a blank white pleated skirt and crop top,” which “may be appropriate attire for a match at the All England Lawn Tennis Club, but not for a member of a cheerleading squad.” In other words, if a clothing identifies its wearer as a member of a group, as the stripes and chevrons identified cheerleaders, it should be deemed functional.
In closing, McKeague called on the U.S. Supreme Court to clarify on a nationwide scale the issue of whether a garment’s design can be copyright protected. “It is apparent that either Congress or the Supreme Court (or both) must clarify copyright law with respect to garment design,” he wrote. “The law in this area is a mess – and it has been for a long time . . . until we get much-needed clarification, the courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of law.”
The U.S. Supreme Court heeded Judge McKeague’s request and will hear argument in the case during its 2016-2017 term. The Court’s decision will likely have significant implications for those in Hawaii’s relatively large apparel business. If the Court adopts the Sixth Circuit’s definition of functionality, then clothing designers and manufacturers will have broader protection for their designs than has traditionally be granted. However, this may also broaden manufacturers’ and retailers’ exposure to liability for designs that are substantially similar to the designs of others. While the Court’s consideration of these issues is fashionably late, it will offer welcomed clarity for Hawaii’s apparel business owners on the extent to which their designs are protected, or infringing on others.