April, 13th, 2017

By Chelsea A. Russell

Protecting fashion designs through intellectual property rights has always been an important aim of the fashion industry. When you think of knockoffs your mind immediately drawn to handbags, designer imitations, and fake Rolexes peddled on the streets of New York City. In March, the clothing and fashion industry made an appearance at the Supreme Court in Star Athletica, LLC v. Varsity Brands, Inc., 137 S.Ct. 1002 (2017), which affirmed the rights of a designer to seek copyright protection. While trademark protection has always been available to designers in the industry, it requires acquired distinctiveness, which can take years or even decades to establish. Previously, copyright had been available to designers, but primarily protected the design sketches rather than the physical items themselves. Star Athletica has expanded previously believed limitations on copyrights in the fashion industry.

Due to the utilitarian nature of apparel, fashion designs cannot receive copyright protection. While an original print or pattern may be protected, the actual design is considered useful rather than an artistic expression. The Copyright Act extends copyright protection to the design of a useful item “only to the extent that such design incorporates 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 USC § 102(a). In Star Athletica, the Court was asked to clarify the separate-identification and independent-existence requirements referenced above.

Varsity Brands sought to enjoin Star Athletica from using their various chevron designs on competing cheerleading uniforms, claiming copyright rights derived from their hundreds of two-dimensional design copyright registrations. After evaluating the designs under the two requirements, the Court found in favor of Varsity Brands. Of the separate identification requirement, the Court concluded that the requirement is met if one can “look at the useful article and spot some two- or three- dimensional element that appears to have pictorial, graphic, or sculptural qualities.” Id. at 1010. As the Court notes, the larger hurdle for a designer is meeting the independent-existence requirement.

To be eligible for copyright protection, the design or feature must be able to exist apart from the useful item. For example, if the design in question had been eligible for copyright protection had it been placed on canvas, paper, or a number of other mediums, it may also be protected on a useful article, such as clothing. Id at 1011. Copyright may afford protection to the design on a shirt, but not the cut of the shirt itself; it may protect the chevrons on a cheerleading uniform, but not the shape and cut of the uniform to which the chevrons were incorporated. Utilitarian elements of the article, such as cut and shape, will not qualify as art even if designed to be more attractive or unique. Id.

This holding, used in conjunction with a traditional trademark approach, creates a powerful defense against infringement in the fashion industry. While trademark protection affords more overall protection, it does require time to build the required recognition, which is achieved when consumers come to associate the design with its respective brand. Conversely, copyright protection can be acquired at the time of creation—even before a product hits the racks, but may be less protective due to copyright law’s more stringent requirements. Fortunately, the ruling in Star Athletics, enables brand owners to expand their rights protection through more than just a trademark portfolio.

Merely days after the ruling in Star Athletics, brands have already taken notice. On March 31, 2017, Puma sued Forever 21 in the Central District of California for trade dress infringement in conjunction with copyright infringement under Star Athletic, among other claims, regarding Puma’s collaborative shoe line with the artist Rihanna, which Forever 21 had allegedly appropriated in an effort to trade upon the fame and goodwill established by the Puma/Rihanna relationship.

While we cannot say how the Puma case will conclude, it is likely that with the Supreme Court’s most recent decision the fashion industry will increase its collaborative use of trademarks and copyrights in protecting apparel and related items.

WHIPgroup is leading counsel for U.S. and international technology companies. We specialize in patent and trademark law.

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