US High Court To Consider IP Protection For Clothing Design 24/05/2016 by Steven Seidenberg for Intellectual Property Watch Leave a Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Steven Seidenberg is a freelance reporter and attorney who has been covering intellectual property developments in the US for more than 20 years. He is based in the greater New York City area and may be reached at firstname.lastname@example.org. Fashion in the US generates over $330 billion in annual revenues, but it is more than a business. Fashion is a well-recognized art, displayed in numerous museum exhibitions throughout the world. This art, however, receives little IP protection in the US. But a case before the US Supreme Court could change that. The case, Star Athletica, LLC v. Varsity Brands, Inc., concerns the design of cheerleading uniforms. Varsity Brands claims it has registered copyrights in the design of its uniforms, and these copyrights were infringed by uniforms created by rival Star Athletica. Athletica argues that Varsity’s clothing designs are uncopyrightable. Cheerleaders A federal district court sided with Athletica and threw out the infringement suit. A divided 6th Circuit Court of Appeals reversed [pdf], ruling 2-1 that Varsity’s clothing designs were copyrightable. On 2 May, the US Supreme Court agreed to hear the case. It might appear that Athletica should win the suit easily, because the US (like most other nations) does not grant copyright protection to a useful article, such as a chair, lamp, or shirt. However, non-utilitarian aspects of a useful article are eligible for copyright. Thus a lamp is uncopyrightable, but a figurine incorporated into the base of a lamp may be copyrightable. A shirt is uncopyrightable, but the design on the shirt’s fabric could be copyrightable. “The black letter law is that copyright doesn’t protect clothing design, but it does protect fabric design,” said Prof. Jessica Litman of University of Michigan Law School. She added, “If you can put it in a frame, stick it on a wall, it is a conceptually separate design [which is eligible for copyright protection].” The black letter law is clear, but applying it has become a nightmare. Courts in the US cannot agree on how to separate useful articles from their potentially copyrightable non-utilitarian aspects. “There are now, I think, ten different tests for how to determine the separability of aspects of useful items,” said Edward F. Maluf, a partner in the Manhattan office of law firm Seyfarth Shaw. “And these tests can be pretty diverse from one another.” That is what the Supreme Court is attempting to fix. The court, in Star Athletica, will decide what test will determine when a feature of a useful article is eligible for copyright protection. A Poor Fit Fashion designers in the US have long wanted IP protection, but merely extending copyright to clothing design would be problematic. Copyright’s long period of protection seems unnecessary for the fast-moving fashion industry – where new designs appear on runways several times a year, and old designs quickly become passé. “Protection [for fashion design] should not potentially last over 100 years. In the fashion industry, there is no need for that kind of protection,” said Maluf. Lengthy protection would not merely be unnecessary, it would be harmful, according to many experts. “In fashion, people do riffs on a commonly held vocabulary,” said Litman. She added that if copyright were to protect apparel designs for many decades, “that would put a real limit on designers’ ability to revisit and redesign fashions from prior eras, which they would find really hobbling. I don’t think fashion designers would like copyright protection if they got it.” To avoid these problems, fashion designers in the US have long urged Congress to enact specially tailored copyright protection. The latest of these bills, H.R. 2511, would give any creative “fashion design” three years of copyright protection. This bill would provide protection similar to the sui generis protection that the EU gives to industrial designs, including clothing designs. Under the EU Designs Protection Directive (98/71/EC) [pdf] and the EU Regulation on Community Designs 6/2002 [pdf], designs that are “novel” and possess an “individual character” receive three years of protection if the design is unregistered, and five years of protection if the design is registered. (Registrations can be renewed for a maximum of 25 years.) Because registration can be a long and expensive process, while fashion trends are fleeting, many fashion designs go unregistered. Who Needs Protection? The US Congress, however, is unlikely to enact H.R. 2511 – or similar legislation – any time soon. It is simply too controversial. The apparel industry is split over the proposed legislation, because it would enable large, high-end fashion design companies to stifle competitors that sell similar clothes at far lower prices. The legislation thus is backed by large and powerful designers, and it is opposed by many mass-market apparel makers. Similarly, the legislation is supported by stores that sell ritzy designer clothes, and it is opposed by mass-market clothing stores. Experts, too, are split over the merits of this legislation. Some assert it would provide a big boost to the apparel industry, presenting the standard argument that intellectual property protection helps foster creative work. “One of main issues in fashion is fast fashion and knockoffs. Preventing copying would encourage innovation,” said Kimberly A. Warshawsky, a partner in the law firm of Ballard Spahr. Other experts counter that IP protection is not needed to encourage fashion design, or indeed, many other creative endeavors “Lots of things – such as fashion, food, and magic tricks – don’t get copyright protection. And I don’t think fashion creators are unable to make a living any more than high end chefs are unable to make a living because others can copy their food,” said Litman. This position appears to be supported by a real world experiment: The EU provides IP protection to fashion designs, while the US doesn’t – yet this has not apparently put the US fashion industry at a competitive disadvantage. “It’s not as if European clothes designers are making money hand over fist and US designers aren’t,” said Litman. She added, “Lots of fashion houses are multinational corporations, and they don’t seem to care about whether they get [the EU’s] sui generis protection.” One reason why the US fashion industry does so well, despite lacking IP protection: Fashion is short-lived, while infringement suits are both lengthy and costly. “If a fashion design lasts for only one season, enforcing the copyright may not be worthwhile,” said Kimberly A. Warshawsky, a partner in the law firm of Ballard Spahr. Professors Kal Raustiala of UCLA Law School and Christopher J. Sprigman of New York University Law School of Law offer another explanation of why the US fashion industry has prospered despite the lack of IP protection. In their article, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, these professors claim that the unauthorized copying of designs actually benefits the fashion industry, by encouraging both investment and the industry’s fast cycle of innovation. Muddling Through When the US Supreme Court decides Star Althetica next term, the court won’t have the option of granting Varsity a special, three-year copyright. Under US current law, Varsity can receive either a copyright lasting decades or no protection at all. Varsity will probably receive nothing, according to many observers. “The Supreme Court tends to grant certiorari when it disagrees with the outcome of a case. So I suspect the court disagrees with what the 6th Circuit did,” said Warshawsky. The 6th Circuit held that the useful aspects of a cheerleading uniform are to “cover the body, wick away moisture, and withstand the rigors of athletic movements.” Everything else – such as the colors and patterns found on the clothing – are non-utilitarian and thus copyrightable. This overturned the district court, which held that colors and designs are an essential part of a cheerleading uniform. They cannot be separated from the uniform’s function, the district court held. That district court ruling accorded with the reasoning in Jovani Fashion, Inc. v. Cinderella Divine, Inc., where a New York federal district court held that the selection and arrangement of sequins, beads, and tulles were an essential part of a prom dress. These items could be physically removed from the dress, but then it would be an ordinary dress, not a prom dress. Because the decorative designs on the prom dress were inseparable from the dress’ function as a prom dress, the decorative designs were useful and uncopyrightable, the New York court held. Jovani’s reasoning may play well at the Supreme Court. “The Supreme Court will probably go along with the prom dress rule, that these designs are what you’d expect in a cheerleading uniform,” said Warshawsky. “Otherwise, the court would open up the door to a lot of litigation and overturning prior rulings in this area.” The high court is unlikely to use Star Althetica to make a major change in US copyright law, according to many experts. Instead, the Supreme Court will aim to clarify the separability test, making it easier for lower courts to determine which aspects of a useful item may be copyrightable. Will the court bring certainty to this vexed area of copyright law? “I don’t think the Supreme Court is likely to do any harm,” said Litman. “The court will either make things clearer, which would be good, or it won’t make things clearer, and that won’t be anything worse than what we have now.” Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related Steven Seidenberg may be reached at email@example.com."US High Court To Consider IP Protection For Clothing Design" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.