Give me an ‘A’! For appropriation or theft?

by Koka Tarini Siddhartha

One of the most common misconceptions in the fashion industry is that every uniquely designed garment can be protected under copyright law. Courts across several jurisdictions have emphasized that only the aesthetic or ornamental features of a garment or product can be protected, and not its functional characteristics. (We have discussed this at length here.) Despite the existence of this rule for over a hundred years, the Supreme Court of the United States (SCOTUS) was greeted with a case where the parties are disputing the copyrightability of a cheerleader uniform.

What is this case all about?

Star Athletica, LLC v. Varsity Brands, Inc. is a case that surprised everyone nearly as much as Donald Trump being elected president of the United States did. For several years, Varsity Brands dominated the cheerleader uniforms market and the company even managed to get its designs copyrighted. Soon after, another company, Star Athletica, entered the business of manufacturing cheerleader uniforms.

Varsity Brands immediately sued Star Athletica for copyright infringement. The trial judge decided in favour of Star Athletica finding that copyright over designs such as chevrons, stripes and patterns could not be granted as those features were intertwined with the design of the uniform. The United States Court of Appeals for the Sixth Circuit overruled this decision on grounds that Varsity Brands already had a copyright over the designs.

With these two varied views, the SCOTUS decided to review the matter. The main issue was whether Varsity Brands had a protectable interest in the design of the cheerleader uniforms. The uniforms manufactured by Varsity Brands are quite basic — the same designs as most cheerleader outfits with a variation only in the two-dimensional patterns on the surface of the uniforms.

Ordinarily, copyright laws protect any print or design on a garment, provided the print has no functional value. Polka-dot prints on dresses have been protected in the past. Why, then, is there an uncertainty in this scenario? Star Athletica contended that the stripes and patterns on the cheerleader uniforms produced by Varsity Brands are positioned in such a manner that they tend to make the wearers of the uniforms look “slimmer, taller and even curvier” (actual words used before the supreme court judges!), highlighting the fact that the patterns are functional in nature and not purely aesthetic.

What is the law around protecting designs anyway?

Since this is an area we have covered extensively here, here and here, we shall only very briefly explain the law at this juncture. A design has two main aspects — a functional and an aesthetic factor. As mentioned above, only a visually appealing factor can be protected. In a situation where the feature is both functional and visually appealing, the doctrine of merger (idea and expression inextricably bound such that the result can be expressed only in one way) comes into play, which essentially means the subject will be barred from copyright protection.

This doctrine of merger is the reason why games like Scrabble are not protected by copyright law. Similarly, a colour can be protected only when it is so integral to a product that a consumer connects it to the product/brand right away. If the aesthetic aspect can be separated or severed from the functionality of a design, it can be secured.

So, what makes this particular decision difficult to make?

The issue is not whether the designs on the uniforms are original, but that the parties disagree over the functionality (or non-functionality in the case of Varsity Brands) of the designs. How does one determine if a conceptually separable feature is useful? This question has got the eight supreme court judges completely gobsmacked with a split opinion.

The chief justice, who was leaning towards Star Athletica, used a lunchbox as an example — a lunchbox with or without a design on the box is still a lunchbox. The design does not change that fact. However, the design on the cheerleader uniform is what makes it a uniform as opposed to any other dress. The functionality of the design is thus indistinguishable from the aesthetic value of the uniform.

On the other hand, a few judges wondered on what basis the decision could be made that it is the design that makes the wearer look slimmer, and not the cut, shape or tightness of the garment. Could two-dimensional designs like stripes and chevrons contribute towards the function or utility of an article?

More judges questioned protecting Varsity Brands’ design under copyright law, which would result in the monopolization of the design and doubling the prices of a piece of clothing — something that fundamentally goes against the objectives of copyright law.

Arguments were presented by both parties on October 31, 2016, and the court’s decision is still pending. Either way, this will be a landmark decision for the fashion industry. It could potentially result in many more claims of copyrighting designs, or it could make copyright law more restrictive than it already is. All we can do now is patiently await the court’s decision.

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