Page 4 - Fashion Law

S4 | MONDAY, SEPTEMBER 12, 2016 | Fashion Law
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GiveMea©! SCOTUS Takes on Zigzags And Cheerleading Uniforms
features that can be identi ed separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. §101 (emphasis added). Section 101 of the Act goes on to state that a “useful article” is “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.”
The apparent simplicity of the above de - nitions has nonetheless led courts analyzing functional items with ornamental features to highly inconsistent results. On the one hand, it is widely accepted that physical separability is not required, and conceptual separability could suf ce to meet the copyright threshold. See, e.g., Kieselstein-Cord v. Accessories by Pearl, 632 F.2d 989 (2d Cir. 1980). However, courts have failed to provide clear guidance for determining whether an aspect of a work is “utilitarian” for purposes of copyright exclusion. Courts have also extensively diverged in their analytical methodology, resulting in uncertainty about what test will be used in any given case, and how such test(s) will be applied.
Consider the context of fashion. At its most basic, the “function” of clothing is to protect the wearer’s body. On this reasoning, copy- right protection for shapes of pockets to hold certain items, or cuts of pants to t different body shapes, would be routinely denied. Less literally, the concept of “function” has been extended to, and copyright protection has consequently been denied for, elements of a uniform that identify the wearer as a casino worker. See Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005). The aesthetic appeal of a prom dress bearing an arrange- ment of sequins, a waistband and tulles was also deemed utilitarian, such that it served “to cover the body in a particularly attrac- tive way for that special occasion.” Jovani Fashion, Ltd. v. Fiesta Fashions, 2012 U.S. App. LEXIS 21245 (2d Cir. Oct. 15, 2012). Function itself, a seemingly concrete determination, has been interpreted as highly variable. The purpose of an element in some instances is narrowly construed, while in others is broadly perceived.
Zigzags and Color: Useful or Design?
The facts in the Varsity case taken up by the court are unremarkable. Varsity, a design- er-manufacturer of cheerleading uniforms, secured copyright registrations covering several two-dimensional graphic designs imprinted on, or woven into, the uniform’s fabric. Varsity alleged Star copied Varsity’s designs, and Star denied copyright infringe- ment on the reasoning that the designs were utilitarian, and therefore not copyrightable subject matter. The lower court agreed with Star that the designs were integral to the func- tionality of the uniform, because “without team colors, stripes, chevrons, and similar designs typically associated with sports in general, and cheerleading in particular,” the garment “is not recognizable as a cheerlead- ing uniform.” Varsity Brands v. Star Athletica, 2014 WL 819422 at *8 (W.D. Tenn. March 1, 2014). The Sixth Circuit reversed, refusing to nd that identifying a cheerleader as a mem- ber of a team was a utilitarian aspect of a cheerleading uniform, and rejecting that a work’s “decorative function” renders it unable to be identi ed separately from » Page S19
BY ERICA KLEIN
This October, as the leaves begin to fall, and football season swings into gear, the U.S. Supreme Court will take on ques- tions that are fundamental to the availability of copyright protection, and vital to the future of fashion. Having stood—and jumped—on the sidelines for decades, cheerleading moves to center stage, looking to the current team of Justices to referee whether chevrons, zigzags and color blocks are utilitarian elements of
ERICA D. KLEIN is partner and leader of Kramer Levin Naftalis & Frankel’s fashion and consumer brands practice in New York.
cheerleaders’ uniforms not eligible for copy- right protection, or instead could be concep- tually separable, proprietary graphic designs suf cient to satisfy copyright registration requirements. Depending on which team’s view scores with the Justices, Star Athletica v. Varsity Brands could either signi cantly expand the eld of fashion elements outside the ambit of copyright protection, or reaf rm upon review that an original work of author- ship does not lose its copyrightability merely because it’s af xed to a wearable item.
History of the Useful Article Doctrine
The useful article doctrine at the crux of Varsity traces its origins to Mazer v. Stein, 347 U.S. 201 (1954), in which the Supreme
Court considered the availability of copyright protection for dancing gurines comprising the base of a lamp. Focusing on the lamp’s ornamental elements, the Mazer court held that artistic features (e.g., gurines) of a use- ful article (e.g., a lamp) that are capable of “separate and independent existence” are pro- tectable by copyright. The issue of “utility” was thereafter incorporated into the Copy- right Act of 1976, which recognizes “pictorial, graphic, and sculptural works” as categories of authorship eligible for copyright protec- tion, though includes in their de nition the limitation that “the design of a useful article, as de ned in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural
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