5 Things You Read About the Cheerleading Copyright Case That Are Wrong

On Halloween we saw Star Athletica, L.L.C. v. Varsity Brands, Inc. go before the U.S. Supreme Court. Since then, many an article have been dedicated to the oral arguments (the process in which the parties’ legal teams present reasons to the court as to why their respective party should prevail) and the significance of the highly-watched copyright case in terms of the protection afforded to fashion designs in the U.S.

We are always truly overjoyed when fashion law is considered by the mainstream media. Yet, it is worth noting that not all of the information that has been presented in connection with this case is entirely correct. Other information simply is not comprehensive enough to confer benefit for its readers. Having said that, we are here to dispel some of the most glaring inaccuracies and to shed light on some of the unfinished narratives courtesy of the fashion media (the guilty parties shall remain unnamed).

1. “OK, so what’s currently protected? Existing protocols are fairly lax; while specific fabric patterns and designs are protected under copyright, physical properties of garments, including pockets and necklines, are not fully protected.”

To start, let us forget the word “protocols” (because what does that even mean in this context?) and instead, swap in the word “laws” and then forget this sentence altogether, as not all existing intellectual property laws are lax when it comes to fashion.

Sure, copyright law – as set forth by the Copyright Act of 1976 – refuses to provide protection for useful articles (such as garments and accessories) in their entirety. Copyright law does, however, provide protection for creative, original and separable elements of those useful articles. What exactly is the test for determining separability (or conceptual separability, as opposed to physical separability, to be exact) for those useful articles? Well, that what we hope the Supreme Court will determine in connection with the Varsity case.

Put somewhat simply: The standard used by courts to decide this issue – and there are many variations depending on jurisdiction – involves an analysis of whether the “ornamental” (aka: “decorative” or “artistic”) elements of a useful article can be conceptualized as existing “independently” of the utilitarian functions of the underlying product. The test – whatever form it takes – generally requires a finding that the ornamental elements exist solely as a result of artistic desires and are independent of the underlying function of the product itself.

Given that garments and accessories are prime examples of “useful articles,” designers often stand to benefit very little from copyright protections as they currently exist. The separability test requires separating artistic elements from the useful ones, which would only allow, for example, a designer to protect a sleeve of a shirt, not the shirt as a whole.

However, that does not make it appropriate to say that “existing [laws] are fairly lax,” as such a statement ignores the two other forms of intellectual property that serve to provide protection for fashion designs: Patents and trademarks. Or more specifically, design patents and trade dress. While these two forms of protection present limitations and/or may not be the ideal forms of protection for garments and accessories for an array of reasons (One example: Design patents are expensive to obtain and take upwards of a year to issue, which is longer than your traditional fashion season), they still provide substantial protection. Articles and arguments that discount this sorely lack context.  

Finally, while yes, the article is correct in stating that specific fabric patterns are protectable under copyright law, this statement – alone – does not really tell us much. It is worth noting that in order for anything to be protectable in accordance with copyright law, it must be: (1) an original work (this is a low bar); (2) of “authorship” (this in not limited to writings, but extends to dramatic, musical, architectural, cartographic, choreographic, pictorial, graphic, sculptural, and audiovisual creations, among others); and (3) fixed in a tangible medium (aka: a form that is more than merely transitory. This is met when you write down your poem or song lyrics, take a photograph, design a print, etc.).

2. “Design elements that are considered functional cannot be protected, which is why you could legally produce a bag that is identical in every way to a Louis Vuitton bag except for their monogram.”

This line is particularly egregious. Remember when we said it is important to not discount the protections afforded by the non-copyright intellectual property doctrines? This is a perfect example of why we do not want to do that.

Yes, it is obvious that one cannot replicate the Louis Vuitton logo; that almost certainly amounts to trademark infringement and trademark dilution, and potentially gives rise to a claim of trademark counterfeiting, which is an even more egregious offense. (Read about the difference between them here).

However, even if you were to leave the house’s trademark-protected monogram “LV” logo out, chances are, it would still be illegal to “produce a bag that is identical in every way to a Louis Vuitton bag.” Why? Well, trade dress and/or design patent protections exist, that’s why.

Trade dress – a sect of trademark law – provides protection for the configuration (design and shape) of a product itself. The definition of trade dress is broad, extending to “the total image of a product,” and it “may include features such as size, shape, color or color combinations, texture, graphics” as long as the total image is distinctive and functions as a trademark (aka: serves a source-identifying function).

Even if a designer’s creation is not inherently distinctive (or able –  upon being used the very first time – to communicate to the consumer that the mark is identifying the source of the product as opposed to describing the product itself), a designer still be able to claim trade dress protection, as long as he can show that the total image of the product holds secondary meaning in the minds of consumers. In short: Consumers associate the product with a particular source. As set forth in Cartier, Inc. v. Sardell Jewelry, Inc., 294 F. App’x 615 (2d Cir. 2008), a designer can show that his product has achieved secondary meaning by producing evidence of unsolicited press featuring the specific design, advertising expenses spent promoting the design, sales success of the design, and attempts by others to copy the design, among other things.

Hermès's Birkin bag, for example, is protected by trade dress law; upon seeing the bag, consumers link the appearance of the Birkin bag design to Hermès. Similarly, it is why the design of Louis Vuitton’s Petite Malle bag, its Alma style, and maybe even its Neverfull can be protected by trade dress law, regardless of whether there is a logo at play or not.

Design patent protection – which protects the ornamental design of a functional item, such as a dress or a handbag or a shoe – is even more stringent. Louis Vuitton, for instance, has been compiling an arsenal of design patent-protected bag designs in recent years in particular. Its Petite Malle, Doc BB Speedy, GO-14 and Malletage GO-14, LockMe PM, and Twist bags all enjoy design patent protection, which makes it very illegal to produce a bag that is identical in every way to any one of those.

Moving on …

3. “To be sure, the U.S. copyright law as it stands proves to be useful for designers who create their own prints; their patterns get protection no matter what.”

Yes, copyright law proves useful for the creators of original works of “authorship.” If we are being completely frank, though, few – if any – mechanisms for litigation prove enormously useful for emerging designers (the ones that such proposals for protection are largely aimed at protecting) because in the vast majority of cases, emerging designers cannot afford to foot a hefty litigation bill to enforce such protections even if their designs enjoy them.

While a seemingly miniscule distinction, this point is absolutely worth noting because many arguments – particularly those made in some of the amicus briefs for this case (and materials that were filed in support of the various copyright legislation amendments, such as the Innovative Design Protection Act) – center on the need for copyright protection in order to enable emerging designers to fight copyists. In reality, if greater copyright protection were extended to fashion designs, the parties that would most directly benefit from this are almost certainly not the emerging designers, who have to allocate almost all of their resources to manufacturing and showing their collections. Instead, those that would benefit are the bigger brands that can afford legal battles; they are likely the same brands that can afford design patents, and thus, are already capable of enjoying quite a bit of protection should they choose to pursue/utilize it.

But back to the passage at hand: No, designers who create their own prints do NOT get protection “no matter what.” Nothing – not even a print – gets copyright protection “no matter what.” As noted above, in order for an expression (as distinct from an idea, which is not protected by copyright law) to even be eligible for copyright protection, it must an “original work of authorship” fixed in a tangible medium. And even then, nothing gets protection “no matter what.” Go it?

While original works of authorship are protected automatically once they are fixed in a tangible medium, that is vastly different from stating that designs get protection “no matter what.” In fact, it seems that if what this writer states were true, the Star Athletica v. Varsity case – which, at this point in time, largely centers on whether the copyrights that Star Athletica asserted in its infringement claims against Varsity are valid or whether they are designs for useful articles – would not be happening.

Moreover, it is absolutely worth noting that there are instances in which print designs are not afforded copyright protection. One instance: When the merger doctrine comes into effect.  For the uninitiated, the merger doctrine – a copyright specific concept – states that if there is only one conceivable way or a drastically limited number of ways to express and embody an idea in a work, then the expression of that idea is not copyrightable.

For a real-world example, consider Alexander McQueen’s skull scarves, which seem an apt illustration to disprove this writer’s proposition that a print is protected “no matter what.” Why? Well, the London-based brand’s depiction of the skull differs very little from the one that is most typically associated with a skull, so the tenants of copyright law would likely prevent McQueen from claiming a monopoly on that design.

While the merger doctrine – and the closely connected scènes à faire doctrine – likely would not prove a deal breaker for many fabric prints, as the expression of many otherwise standard elements may be varied by the artist or designer at hand, its existence and potential implications stand in the way of the accuracy of any blanket statements about guaranteed, unconditional protection.

4. “Depending on the Supreme Court's decision, the fashion industry could either breathe a sigh of relief and get to keep the scrap of protection that it has under U.S. law... or try to stitch together another option."

The legal expert responsible for this quote is guilty of doing exactly what we cautioned against above: Discounting the other forms of protection available for fashion designs. Legal protection for fashion designs is NOT limited to copyright. In fact, as previously noted, copyright is just one of a number of intellectual property doctrines that provides protection for garments and accessories. It would be prudent to remember this.

5. The Council of Fashion Designers of America, whose members include more than 500 clothing and accessory manufacturers, filed an amicus brief arguing that finding in favor of Star would leave [fashion designers] “defenseless against copyists.”

A ruling in favor of Star Athletica actually would not leave designers “defenseless against copyists.” As noted repeatedly in this article alone, designs have other intellectual property protections. These other forms of protections – much like copyright law – may not be ideal, but they exist.

Designers with distinctive designs can rely on trade dress actions to fight copying. If their logo or brand name is copied, they can rely on trademark law. Still yet, if the designer has created a new, original, and ornamental design for an article of manufacture, he may rely on design patent protection. As such, it is crucial to remember that regardless of the outcome of the case, designers will not be left defenseless.