Developments in Copyright Protection of Apparel

Apparel manufacturers are constantly struggling to defend against the costly threat of knock-offs.  Currently, protection mechanisms in the United States for apparel include protecting distinctive logos or trade names with trademarks, protecting new and ornamental designs with design patents, and protecting the overall color, look, and packaging of a garment with trade dress.  Despite these mechanisms, however, adequate protection against knock-offs is not always possible, and as a result, imposters are common.  In light of a new Supreme Court case, though, apparel developers may be able to add one more tool to their arsenal for protecting their designs.
In March, the U.S. Supreme Court ruled 5-2 in favor of Varsity Brands Inc., the largest cheerleading apparel supplier in the United States, in a case against competitor Star Athletica, L.L.C. for copyright infringement of two-dimensional decorative designs adorning Varsity Brands Inc. cheerleading uniforms.  Historically, uniforms are considered apparel, a “useful article,” and as such have typically been excluded from copyright protection.  In recent years, there has been a substantial amount of disagreement in the courts regarding whether decorative elements of apparel and shoes may be eligible for protection under copyright laws.
According to the Supreme Court, tests for determining copyright eligibility include whether a decorative 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 fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”  Interpretation of these tests has led to murky waters, leaving both the apparel industry and the intellectual property law community on the edges of their seats.
An initial district court ruling on the Varsity Brands case determined that the creative designs “could not be conceptually or physically separated from the uniforms and were therefore ineligible for copyright protection.”  But the Sixth Circuit reversed that district court decision, concluding that the graphics could be “identified separately” and “capable of existing independently” of the uniforms, and therefore eligible for protection under copyright law.  The Sixth Circuit decision was appealed by Star Athletica, L.L.C., bringing the decision to the U.S. Supreme Court, where copyright protection of Varsity Brands Inc.’s cheerleading apparel decoration was upheld.
So what does this mean for players in the apparel industry?
The precedent of the Varsity Brands Inc. case may be opening a new avenue for apparel developers to aggressively protect creative elements of their apparel designs.  Case-in-point: Puma SE is currently pursuing an infringement lawsuit against Forever 21 for allegedly copying a sandal design with a substantial knotted satin bow adorning it. Whether Puma’s bow is eligible for copyright protection may depend upon whether or not the courts can imagine it separately from the sandal and, instead, atop a favorable ruling for Puma SE.

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