U.S. Supreme Court Considers Copyright Protection for Designs Applied to Cheerleader Uniforms

By: John Montgomery

  • Are Copyrights for Designs Applied to Cheerleader Uniforms Enforceable?
  • Will the Fashion Industry Obtain Copyright Tools Effective to “Kill” the Knockoff Apparel Industry?
  • Will The Supreme Court Establish or Endorse a Test for Determining Separability of Protectable Copyright Design from Otherwise Unprotectable Useful Articles?

On November 1, 2016, the Supreme Court of the U.S. heard oral arguments in a case disputing the availability of copyright protection for design features characterized as chevrons, zigzags and stripes reproduced on cheerleader uniforms.  It is generally agreed in the legal briefs filed by the parties, and reportedly also at oral argument, that it was appropriate for the Copyright Office to issue certificates of registration for two-dimensional drawings of the designs.  The dispute is whether the Copyright Act extends protection against unauthorized reproduction of those designs onto useful articles of clothing (i.e., cheerleader uniforms).

At stake is whether the fashion industry leaders will be able to successfully use copyright protection to stop the fashion reproductions when the use of copyrights, trademarks, and design patents has not been entirely successful to stop knockoffs of designs applied to clothing.

Although the cheerleader uniform market is specifically involved in this case, the principles of copyright protection to be decided and the Supreme Court’s interpretation of the Copyright Act for designs reproduced on cheerleader uniforms are also expected to be conceptually applicable to the entire U.S. fashion industry.  The fashion industry is estimated to be worth as much as $335 billion per year.  In particular, the women’s fashion industry where “knockoffs” of designer fashions are rampant is estimated to be worth as much as $225 billion per year.  Also, potentially at stake is an even broader issue of whether principles of copyright protectability of designs on clothing might also impact other industries where the designs applied to general-purpose useful articles might be effective to obtain copyright protection for special-purpose useful articles.

It is well established that useful articles themselves are not entitled to copyright protection.  The language of §101 of the Copyright Act definition of “pictorial, graphic, or sculptural works”  provides for copyright protection of designs on useful articles “only if, and only to the extent that such pictorial, graphic, or sculptural features that can be identified separately from and are capable of existing independently of the  utilitarian aspects of the useful article.” (17 U.S.C. §101 Definitions, “Pictorial, graphic, and sculptural works….”)  The Circuit Courts of Appeal have applied different “separability” tests (up to ten different tests) to determine whether designs applied to useful articles are identified separately from and exist independently of the useful article to be entitled to copyright protection.

The legal issue in this case might be phrased as “[w]hat is the appropriate test to determine when a feature of the design of a useful article is protectable under §101 of the Copyright Act?”

Petitioner argues that when the designs are applied specifically to a cheerleader uniform they are not separable from its utilitarian aspects. Petitioner asserts the design features consisting of zigzags, stripes and chevrons on the uniforms have utilitarian aspects of cheerleading uniforms; for example, providing the appearance of a cheerleader uniform, identifying the wearer with a particular team, and giving the wearer an appearance as slimmer or taller.  Only with such designs does the useful article have the same utilitarian aspects that cause it to be a cheerleader uniform.  Thus, it is asserted, granting protection for the reproduction designs that are characteristic of a cheerleader uniform would result in an unwarranted monopoly in the useful article that is a cheerleader uniform.

The Sixth Circuit Court of Appeals created a test for determining separability of a design from a useful article in which it first identified the utilitarian aspects of the useful article consisting of covering the body of the wearer, wicking away moisture, and withstanding the rigors of the sport.  It did not consider the particular features that were asserted by Petitioner to be useful and characteristic of a cheerleader uniform.  On this basis, the design features at issue were then deemed separable from the identified utilitarian aspects of the useful article and were deemed protectable as applied to the useful article.

Respondents, Varsity Brands, Inc. et al, argue that the two-dimensional designs, for which copyright registrations were obtained by Respondent, are separable from the three-dimensional useful article of clothing (a cheerleader uniform) onto which the designs are reproduced.   Consistent with the Sixth Circuit’s decision, Respondent argues that the exclusive right to reproduce such designs on a uniform is (and should be) protected under the Copyright Act.

It is of significant interest to the IP community to see how this will be resolved at the Supreme Court.