The story of cheerleaders, chevrons and stripes!

Can fashion designs in the United States of America apply for copyright protection?

Under USA Copyright law, the question whether a design of a useful article is eligible for copyright protection is assessed by the concept of separability.

The Copyright Act states that the “pictorial, graphic, or sculptural features” of a “design of a useful article” are eligible for copyright protection as artistic works if, and only to the extent that, those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article”, [17 U.S.C. 101]. This rule draws a line between works of applied art falling under copyright protection and works of industrial design excluded from copyright protection, ensuring that useful articles do not receive more protection than what is available by patent. Copyrights are easier to obtain and last ninety years (or more), much longer than a fourteen-year design patent.

For clothing designs, the courts in the U.S.A. have applied several tests over the years to assess this delicate question.

In 2017, a new test for separability appears with the Star Athletica v. Varsity Brands case. The question addressed is whether colourful stripes, zigzags and chevrons applied on cheerleader uniforms are conceptually separable from those uniforms and thus eligible for copyright protection.

Varsity Brands designs, manufactures, and sells apparel and accessories for use in cheerleading. The company registered over two-hundred copyrights for two-dimensional decorative patterns on cheerleader uniforms. Star Athletica, a competitor, produced uniforms with similar designs, leading Varsity Brands to file a copyright infringement suit in 2010.

The District Court rejected the claims on summary judgment and ruled in favor of the defendant finding that Varsity’s uniform “loses its utilitarian function as a cheerleading uniform when it lacks all design and is merely a blank canvas. (…) Without the kind of ornamentation familiar to sports (or cheerleading) fans, the silhouette no longer evokes the utilitarian concept of a cheerleading uniform, a garment that is worn by a certain group of people in a specific context.” The stripes, zigzags and chevrons could not be physically or conceptually separated from the utilitarian function of the resulting cheerleader uniforms. As a result the designs were excluded from copyright protection.

The decision was reversed in appeal by US Court of Appeals for the Sixth Circuit.

To determine the separability, the circuit court used a kind of ‘hybrid’ test for separability. The court defined the useful article of cheerleader uniforms as “having an intrinsic utilitarian function, namely to cover the body, wick away moist, and withstand the rigors of athletic movements.”

The court continued by stating that “a plain white cheerleading top and plain white skirt still cover the body and permit the wearer to cheer, jump, kick, and flip. (…) The top and skirt are still easily identified as cheerleading uniforms without any stripes, chevrons, zigzags, or color-blocking.” The designs are separable and therefore not excluded from copyright protection under the useful article doctrine.

The dissenting judge urged the Supreme Court of the USA to clarify and determine the ‘correct’ test to assess whether a feature of a useful article is eligible for copyright protection under Section 101 of the Copyright Act.

Supreme Court affirmed the Sixth Circuit and set forth the following separability test as ‘the proper test’: “a feature incorporated into the design of a useful article is eligible for copyright protection only if that feature can be perceived as a two- or three-dimensional work of art separate from the useful article and would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”

The test is satisfied here: the surface decorations on the cheerleader uniforms are separable and therefore eligible for copyright protection.

“First, the decorations can be identified as features having pictorial, graphic, or sculptural qualities. Second, if those decorations were separated from the uniforms and applied in another medium”, for instance a canvas, “they would qualify as two-dimensional works of art under Section 101.”

The opinion has strengthened the fashion industry in their hope for stronger protection of their designs.

The Varsity Brands v. Star Athletica case can be found under Darts-IP internal reference:

  • W.D.Tenn._2-10-cv-02508_20140301_1 (District Courts)
  • us-ca_2014-05237_20150819 (US Court of Appeal)
  • us-sc-2015-0866_20170322 (SCOTUS)