Supreme Court Clarifies Availability of Copyright for Applied Art on Apparel

In a ruling authored by Justice Clarence Thomas, the Court held 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.”

Generally, copyright does not protect useful articles (such as the shape of clothing or footwear), but it can protect works of art applied to, but physically or conceptually separable from, a useful article. 17 U.S.C. §101. The Copyright Act defines such protectable design elements as those that incorporate “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. §101.

In Star Athletica, L.L.C. v. Varsity Brands, Inc., et al, Varsity Brands Inc., a longtime manufacturer of cheerleading uniforms, brought copyright infringement claims against Star Athletica, a 2010 entrant into the cheerleading uniform market, for use of designs nearly identical to those Varsity manufactured. The outcome of this litigation hinged on the eligibility of the design elements of Varsity’s uniforms – which include color combinations as well as ornamentation such as chevrons and stripes – for copyright protection. This threshold issue came down to the determination of whether these design elements were “conceptually separable” from the uniforms themselves.

To date, there has been no single, uniformly applied legal test to determine whether an artistic element is conceptually separable from the useful article on which it appears. At the circuit court level in Star Athletica, the Sixth Circuit applied a five-factor test to find that Varsity Brands’ designs were conceptually separable from the uniforms on which they appeared, and thus subject to copyright protection. Varsity Brands, Inc. v. Star Athletica, L.L.C., 799 F.3d 468 (6th Cir. 2015).  But as many as five other judicially-derived tests for conceptual separability exist across various circuits, as well as one found in Copyright Office literature and two found in treatises on copyright law – totaling nine potential tests to determine conceptual separability.

The lack of a single standard for determining conceptual separability has opened the door for venue shopping, and has given the apparel industry little clarity regarding which design elements in a useful article are eligible for copyright protection.

Now, the uncertainties regarding conceptual separability – at least in the apparel industry – have been resolved by the Supreme Court’s decision. In this ruling, the Court hued closely to the statutory language in the Copyright Act, and rejected the complicated tests used in some circuits.

The Court also carefully articulated the ruling’s narrow scope, clarifying that “the only feature of respondents’ cheerleading uniform eligible for a copyright is the two-dimensional applied art on the surface of the uniforms… Respondents have no right to prevent anyone from manufacturing a cheerleading uniform that is identical in shape, cut, or dimensions to the uniforms at issue here.”

On the whole, yesterday’s ruling is a sigh of relief for fashion innovators and textile makers. There is now no doubt that applied art on clothing is protectable under copyright law, and through this ruling the Court rejected the historical bias against clothing as an accepted canvas for a creative work.  The ruling serves to reinforce the value of copyright in applied arts, and in particular for the apparel industry, and is likely to have practical implications throughout that industry:

Brands will now be able to create applied designs with more certainty regarding which elements will be eligible for protection. Fashion innovators may want to expand their copyright portfolios to include registrations for the separable design elements appearing on garments, footwear and accessories. And owners of the copyright for these applied designs may see increased opportunities for revenue from licensing these designs. The full scope of this ruling’s implications may become even clearer if the Copyright Office changes its guidelines and procedures so that it is easier to obtain copyright registrations for surface decorations on garments, for example the arrangement of bows, ribbons, or other ornamentations.

While this decision – which essentially enforces and clarifies a right that many acknowledged prior to yesterday’s holding – does not signal drastic changes for the fast fashion industry, it does suggest that certain practical precautions should be taken: Fast fashion companies must remain vigilant against unintentional infringements in the applied art elements appearing on their products. They should insure that they obtain appropriate representations and warranties from the suppliers and manufacturers of fabrics and other embellishments, and that they are fully indemnified by those entities. Companies may also need to budget for an uptick in copyright infringement claims related to the applied art elements appearing on their products.

While the opinion’s bearing on the apparel industry is clear, it does leave open the issue of determining when a work is conceptually separable (i.e. capable of existing independently) for other types of useful articles and industrial designs. The Court declined to issue a bright line test to determine that the “separately identified feature has the capacity to exist apart from the utilitarian aspects of the article”, instead leaving that determination up to the “decisionmaker.”