Can the design elements of clothing be copyrighted?

Posted: January 24, 2017

A pending Supreme Court case involving a dispute over cheerleading uniforms may provide legal guidance on the difference between "creative works" and "useful works" in copyright law, says University of Illinois professor and copyright librarian Sara R. Benson, a current master's student in library and information science at the iSchool.

sbenson.jpg?itok=4nmCer_o Benson, an expert on copyright law, spoke with News Bureau business and law editor Phil Ciciora about a pending U.S. Supreme Court case involving rival cheerleading uniform manufacturers. The dispute centers around whether cheerleader-uniform designs can be copyrighted – and if so, can that create a copyright monopoly.

Why is this case, Star Athletica v. Varsity Brands, so important?

Some people would argue that it’s only important for the fashion design industry. I think that is an understatement. True, it’s a case about cheerleading outfits, and whether you can copyright the design of the outfit.

But to me, the case really lies at the intersection of copyright and patent in terms of functional, utilitarian designs. Courts have been struggling to define the line between the two for decades, and now the Supreme Court will hopefully have the opportunity to settle it once and for all. There are many tests that courts have developed over the years to attempt to draw the line between "creative works" and "useful works." The reason courts need to draw that line is to distinguish between works of creativity governed by copyright and useful works that are governed by patents. Copyrights last a very long time and are easy to obtain, which is why we don’t want to allow copyrights in useful works because to do that would make the public use of such works too restrictive.

But the creative part of a useful article can still be copyrightable. So there's a distinction between a cheerleading outfit and its designs. At the heart of the Star Athletica case lies the question: Can you copyright the design part of a cheerleading outfit – the chevrons, zigzags, stripes and color blocks? That's what we're going to find out when the Supreme Court decides the case. But, we will also learn something much deeper – where to draw the line between the creative parts of design and the useful parts of a utilitarian article, such as a sports outfit.

How will the court make that determination?

There have been up to six tests that have been set forth by the courts to determine this line between the "beautiful" part of a useful article and the "functional" part of a useful article. The U.S. Supreme Court essentially took this case to provide guidance to lower courts about which test to use.

Factually, I don't think this case is all that complicated. Both sides agree that you can copyright a two-dimensional design. The zigzags that are on the dress, for example. But one side says, "You can copyright that, but once you try to make it into a dress for a cheerleader, that's where you’re wrong."

No one disagrees about whether you can copyright the design. It's whether you can make the dress from the design. That's the question. Is it more like camouflage, in which the design of the print meshes with the design of the garment to the point that you can’t separate them?

Could an adverse ruling potentially kill knock-off brands?

That's what Justice Sonia Sotomayor seemed to be implying in oral arguments. The fashion industry has little that you can copyright, and this is asking, "Where is that line?" If you can get a design of something "useful," a design on say a purse, it would kill the entire knock-off industry.

That's why the Supreme Court really needs to define where this line is, because it also defines all industrial design. A lot of industrial designers do not take advantage of copyright protection. They think that they need patent protection. They probably do, but they don't realize that they can copyright part of their product as well. And the good thing about that is you can have both things at once. Copyright is cheaper and quicker. Fifty-five dollars and you're done. A patent can cost upwards of $10,000, including attorney's fees, and can involve a multiyear wait. I think the outcome of this case will have a big impact on that industry, depending on what the test looks like.

What is the worst-case scenario?

The worst outcome would be a monopoly on a certain product, which is what Justice Stephen Breyer alluded to in oral arguments. If the court allows for a copyright of a particular design, then it's going to give different designers a monopoly. So this case could potentially be far-reaching in terms of useful design versus industrial design.

This case was argued when there were only eight justices. What happens if there's a tie?

Even in a 4-4 case, you might have a plurality opinion in which some justices agree on part of the rationale and that becomes the rule. You would have to pick out the common ground in the decisions. Maybe they agree on the test but disagree on how to apply it. If they can all agree on a test, then that's the part of the decision that lower courts will apply.

I'm hopeful that, at the very least, the court will provide lower courts guidance on which test to apply in cases where creativity and industrial design meet. The last time the Supreme Court took an issue like this was Mazer v. Stein in 1954. So it's been few and far between. They've just let the lower courts struggle with the issue, which is probably why they thought they finally needed to clear it up.

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