Imitation may be the sincerest form of flattery, but fashion
designers understandably are dismayed when perfect replicas of
their creative apparel are sold at deep discounts to lower-end
markets soon after the originals first appear on the racks of
high-end stores or on celebrities walking the red carpet.
Unsurprisingly, designers and their counsel think long and hard
about how best to protect fashion designs from this kind of
copying, including through registered trademarks (such as trade
dress), design patents and copyrights. But legal protections
against infringing conduct can be difficult to sustain because
clothing is a useful item that we all need. No one should get an
exclusive on shirts, pants and other clothes. But designers might
get intellectual property protection for the creative elements
reflected in their designs.
In the world of copyright (generally speaking, perhaps the most
easily obtained form of clothing design protection), the challenge
in determining whether an article of clothing deserves legal
protection against infringement lies in the distinction, if one can
be found, between the particular design of the garment, and the
purpose of the garment itself. Or put another way, can you separate
the creative features of an item from its utilitarian aspects? If
not, a finding of infringement is not possible even if copying
occurred, because the copied design was not copyrightable to begin
with. But just how to go about answering that seemingly
straightforward question has vexed lawyers, Congress (which has
unsuccessfully tried many times to amend the Copyright Act to give
statutory protection over novel fashion designs) and the federal
courts.
The Sixth Circuit, one of the country's 13 appellate courts
whose decisions may be reviewed only by the U.S. Supreme Court,
took this issue on in connection with several copyright-registered
cheerleader uniform designs in the case Varsity Brands, Inc., et
al. v. Star Athletica, LLC. Varsity, the plaintiff, designs,
markets and sells cheerleading apparel and accessories. Its
in-house designers sketch concepts that Varsity uses to produce
cheerleaders' uniforms. Star, the defendant, also markets and
sells various sports uniforms, including cheerleading attire.
In mid-August, a three-judge Sixth Circuit panel reversed the
District Court (or trial court), but by a 2-1 vote. The trial judge
had determined that the designs themselves were not copyrightable
because he could not distinguish between the creative aspects of
the uniforms and the purpose of the uniform itself. So if the
designs were not copyrightable, then there could be no infringement
and Varsity's case was dismissed. The sole dissenting judge
from the Sixth Circuit panel agreed with the trial judge. This
means that of the four federal judges who reviewed this case on the
same law and facts, two could separate the creative and utilitarian
elements (and held in favor of copyrightability), while the other
two could not. Such is the perplexing state of the law.
Here's some background on the case up to this point. To
demonstrate copyrightability, Varsity needed to show that the
uniform designs are non-functional or at least that they contain
design elements that are separable from the utilitarian traits of
the garment. The general "separability test" sounds
simple enough: is the design in question that of a "useful
article that incorporates pictorial, graphic or sculptural features
that can be identified separately from, and are capable of existing
independently of, the utilitarian aspect of the useful
article"? But applying the test is a challenge to any
judge.
The trial judge applied the separability test, and concluded that
the particular elements of the copyrighted graphic designs like
"the colors, stripes, chevrons, and similar designs" make
the garment "recognizable as a cheerleading uniform" that
identifies the team to which its wearer belongs, and therefore are
inseparable from the utilitarian aspect of the garment. Put another
way, "the aesthetic features of a cheerleading uniform merge
with the functional purpose of the [cheerleading] uniform."
So, if they merge and cannot be separated, then the designs are
deemed solely that of a useful item, and cannot be considered
copyrightable.
Varsity appealed to the Sixth Circuit. The two majority opinion
judges admitted that, when it comes to determining
"separability," "courts have struggled mightily to
formulate [such] a test ..." To prove its point, the court
listed no fewer than nine different approaches to
"separability" used by the different federal circuit
courts around the country. And after having discussed each of them
to varying degrees, it then came up with its own "hybrid
approach."
When all was said and done, the Sixth Circuit found that the
graphic features of the cheerleading designs are "more like
fabric design" (the design imprinted on a fabric which is used
to create a garment) than dress design (the shape, style, cut and
size for converting the fabric into a finished garment). And
because the Copyright Act protects fabric designs, and not dress
designs, the Sixth Circuit found that Varsity had established the
copyrightability of its designs and could continue to pursue its
case. The Court's language is noteworthy because it implies a
scale between fashion design on one end and dress design on the
other, rather than a design being simply one or the other. So if a
design is "more like" one than the other, then it will be
treated as if it were entirely that type of design, and its
copyrightability determined accordingly.
In some ways, this possibility makes assessing copyrightability
even more difficult, as degrees of emphasis one way or the other
can determine a party's rights. The dissenting judge on the
panel seemed to agree, writing that "either Congress or the
Supreme Court (or both) must clarify copyright law with respect to
garment design."
Where does that leave the fashion designer?
As unsettled as the law might seem, there still are certain best
practices that can help avoid trouble or create a supporting
framework in the event existing rights should be vindicated.
For example, designers should work with intellectual property
counsel to build a protocol for determining whether copyright,
trademark or patent registration might be a suitable form of
federal protection for their creations, and if so, seek to obtain
those registrations.
In addition, designers might consider using image search technology
to see whether their most important works are appearing in on-line
retail sites. If a design is being used without license or other
permission, intellectual property counsel can help determine the
available options.
Also, designers should undertake the appropriate copyright,
trademark and patent searches to see if their works might infringe
on an already existing work. This can be difficult to do, and is
not a 100 percent guarantee of capturing everything out there, but
can be very useful in avoiding infringement accusations.
In the meantime, it seems unlikely Congress will succeed in
clarifying the law, and it might be left to the Supreme Court to
set the standard analytical tests all courts must use to determine
copyrightability. This may take a couple of more years at least,
but this might lead to greater predictability when it comes to
determining parties' rights and liabilities.
Originally published in Apparel
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