The fashion industry won a potentially powerful new tool for preventing knockoffs as the U.S. Supreme Court ruled in favor of a manufacturer of cheerleader uniforms that sought copyright protection for its distinctive decorative patterns.
The U.S. Supreme Court in October for oral arguments, Star Athletica v. Varsity Brands, the much-anticipated copyright dispute over cheerleading uniforms, has been decided by the Supreme Court. The uniforms at issue may, in fact, be protected by copyright law; Justice Clarence Thomas clarified the standard for conceptual separability – the hot issue at play in the case.
BACKGROUND
The court ruled in Star Athletica v. Varsity Brands that Varsity Brands isn’t precluded from obtaining copyrights on more than 200 patterns of stripes and chevrons it places on male and female cheerleader uniforms under a provision of federal copyright law that allows for protection of graphic works incorporated in a “useful article,” which is otherwise not eligible for copyright. The design of an elegant Shaker chair or a particularly beautiful shovel can’t be copyrighted, for example, but graphic elements applied to those articles might be.
The majority disagreed. In an opinion by Justice Clarence Thomas, the court held that if the graphic designs can be imagined as separate entities eligible for copyright on their own — and in a footnote, Thomas said the court took no position on whether Varsity’s stripes and chevrons meet that test — then the fact they also appear integral to the function of the uniform doesn’t matter.
Justice Stephen Breyer, joined by Justice Anthony Kennedy, said he couldn’t get past the fact Varsity registered pictures of uniforms, not the designs on them.
“Look at the designs that Varsity submitted to the Copyright Office,” Breyer wrote. “You will see only pictures of cheerleader uniforms. And cheerleader uniforms are useful articles.”
RESPONSE AND THE IMPLICATIONS
Founder and Chairman of Varsity Brands Jeff Webb, stated, “Today’s favorable ruling represents the culmination of years of hard work to protect our original design, and we are of course gratified by the outcome and what it means for our business. But more fundamentally, we were honored to serve as advocates and fighters for the basic idea that designers everywhere can create excellent work and make investments in their future without fear of having it stolen or copied.”
John Bursch, who represented Star Athletica, told WIPR that his client is “obviously disappointed with the result and believes that Justices Breyer and Kennedy had the better of the argument.” He added that today’s ruling is not the end of the litigation, as the U.S. District Court for the Western District of Tennessee must still determine whether the designs are original, and thereby, protected by copyright law.
“The fashion industry has thrived against this backdrop,” he wrote, and enhancing copyright protection risks “increased prices and unforeseen disruption” in the $370 billion U.S. clothing industry.
The majority downplayed such fears, saying today’s decision only clears up a dispute among lower courts about how to determine whether a feature of clothing can be copyrighted. In the first footnote to the opinion, Thomas said it will be left to a lower court to determine if Varsity’s designs are original enough to meet the test, citing Feist Publications v. Rural Telephone Service Co., a 1991 decision denying copyright protection for telephone books.
