How Will Last Week’s Supreme Court Decision in Star Athletica v. Varsity Brands Affect the Sports Apparel Industry?

March 2017NYSBA The Entertainment, Arts and Sports Law Blog

In my latest New York State Bar Association Entertainment, Arts and Sports Law blog post, I analyzed the Supreme Court’s holding that “an artistic feature of a design of a useful article” – in this case cheerleader uniforms – “is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately form the useful article.”

This reinforces what the sports apparel industry has always known in terms of copyright protection for original designs imprinted on apparel.

While U.S. law does not protect apparel designs themselves (i.e., the cut, contour and shape of a garment) because they are deemed utilitarian or functional – which remains a hotly contested issue pitting couture fashion designers against consumer advocates – original imprints and other design elements that can be “separated” from a garment and stand alone have been protected by copyright for many years. Indeed, we see scores of copyright infringement cases filed annually by plaintiffs owning registered fabric designs that are used on garments.

The real question is whether the Supreme Court’s broad view of design separability may embolden apparel and fabric plaintiffs to bring more suits over small geometric shapes or designs incorporated into a garment. The Copyright Office’s Compendium specifies that common patterns such as chevrons and checkerboards, and representational symbols such as diamonds and stars, are non-copyrightable. Nevertheless, what can be registered is an original combination of such familiar symbols or designs, or a design incorporating them with other elements, as were the designs in the Varsity Brands case.

Because a Certificate of Copyright Registration is still necessary in order to sue for infringement in the U.S., the Copyright Office serves as a bulwark against unwarranted registrations in this area. But as the Office also tends to take a broad view of the minimal originality and creativity required for copyright protection, we may start seeing more lower court fights over the copyrightability and “separateness” of imprinted or applied apparel design elements.

For more information, please contact:

Barry Werbin at + 212 592 1418 or [email protected]

© 2017 Herrick, Feinstein LLP. This article is provided by Herrick, Feinstein LLP to keep its clients and other interested parties informed of current legal developments that may affect or otherwise be of interest to them. The information is not intended as legal advice or legal opinion and should not be construed as such.