The Tortuous Path to Fashion Design Copyright Protection

There is a steady stream of music copyright cases in federal court. Lawsuits over clothing designs are few and far between. Depending on the source, US music industry revenue is about $15 to $30 billion. Clothing industry revenue in the US is at least ten times more. Knock-off clothing designs are a way of life. Why aren’t there ten times as many copyright lawsuits in the fashion industry?

Part of the answer may be popular hits are as short-lived as the latest fashion design, but the music can keep playing and producing money for decades while old clothing designs must be hunted down in estate sales and vintage clothing shops. Until the designs come back in updated versions.

But the biggest reason fashion design infringement lawsuits are rare is the Copyright Act. It gives apparel no respect. Designers can try to protect their creations under trademark law too, but today’s post is just about the Act.

It covers eight categories of creations or “works.” Music gets two of the eight, “musical compositions” and “sound recordings.” Fashion designs get none.

Companies determined to protect their designs must force them into the category called “pictorial, graphic, and sculptural works.” To make it as hard as possible, the designs must be identifiable “separately from” and be “capable of existing independently” from the “utilitarian” aspects of the useful article. 17 U.S.C. §101,102 (a). They must be a fish that can live out of water.

The European Union has the Regulation on Community which allows registration at the Office for Harmonization in the Internal Market (OHIM) and gives monopoly protection to original designs for renewable periods of five years for a maximum of 25 years. And there is an unregistered right which is automatic and protects against deliberate copying for three years. So everything is protected.

Despite the degree of difficulty under the Copyright Act, Varsity Brands sued Star Athletica for knocking off its cheerleader outfits. And despite a trial court loss, Varsity persevered and was rewarded with a victory at the Sixth Circuit Court of Appeals last month which revived the lawsuit just in time for football season. Varsity Brands, Inc. et al. v Star Athletica LLC, No. 14-5237 (6th Cir. Aug. 19 2015). It goes back to the trial court for another round.

Judge Karen Nelson Moore’s meticulous decision is a roadmap of all the dead ends and detours a design must navigate to get copyright protection. After surveying the approaches to the issue in the various federal appeals courts, she offers a five-question procedure for deciding if a design is protectable.

The five questions sound easy until you realize you’re not dealing with the ordinary meanings of words. The questions use words as they are defined in the Copyright Act and interpreted by the courts.

First, you ask if the design is a pictorial, graphic, or sculptural work. The Act’s definition of the phrase is full of questions with terms like “artistic craftsmanship”

If the answer to the first question is Yes, you must ask if you’re dealing with something with “an intrinsic utilitarian function.” Clothing should give you a Yes, but what does a bow tie do? That is question three, what are the utilitarian functions?

The fourth question asks if a viewer can identify the pictorial, graphic, or sculptural work separately from the utilitarian functions. The last question asks if the separately viewable work can “exist” independently. This all makes great sense if you have a PhD in philosophy, but you must go through it since it’s the only, stingy gift of the Act to apparel.

The decision, over dissent, recognizes the cheerleader outfits as protected by copyright primarily because the protectable elements are mostly fabric design. Fabric designs are the reasons for the oldest European laws which are the ancestors of the EU community regulation.

So if you think you’re about to launch a fashion hit and you want to go after the knock-offs while the hit lasts, the design of the fabrics you use could be the critical factor.

“I know it when I see it” is a 50 year old classic from the pornography wars that immortalized Justice Stewart. Jacobellis v. Ohio, 378 U.S. 184 (1964). It is about as unhelpful as law can be as a guide for the future. And it may be as close as federal courts can get to generalize about copyright protection for fashion designs until the Copyright Act is changed to explicitly protect them.

Blog Varisty Brands cheerleading costume copyright 6th Cir August 19 2015

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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