“The law in this area is a mess—and it has been for a long time.” Such was the dissent’s blunt assessment of the state of copyright law as applied to garment design in Varsity Brands v. Star Athletica, a recent 6th Circuit case dealing with the copyrightability of the patterns on cheerleader uniforms. With respect to its eligibility for protection under copyright law, and in contrast to the much broader protections available under European law, fashion in the United States has long been treated as more akin to products such as lamps or furniture, than to the traditional fine arts. That is, as a useful item, clothing is only protectable with respect to elements that are either physically or conceptually separable from the item’s function. However, interrelated disagreements over the definition of “function” and the application of the doctrine conceptual separability have generated uncertainty, which came to the fore and were exemplified in Varsity Brands.
At its core, the doctrine of separability derives from the notion that an otherwise copyrightable item should not be denied protection just because it is employed as part of a useful article. For example, in Mazer v. Stein a sculpture retained its copyrightability despite being used as a base for a lamp. Separability can take the form of physical separability (as in the case of the statue, which can be physically detached from the lamp), or conceptual separability (such as the belt buckles in Kieselstein-Cord v. Accessories by Pearl, Inc., whose design elements were determined to be conceptually distinct from their function, despite being physically indivisible). Despite its deceptive simplicity, the inconsistency that has resulted from this concept is reflected in the number of different formulations of it currently vying for acceptance, with the Varsity Brands opinion listing nine variations of the conceptual separability test in case law, statutes, and treatises.
At the center of the Varsity Brands case is a second consideration that is necessarily implicated in the separability inquiry, namely: how should we define an item’s function? The question is particularly fraught in the case of clothing, whose function is so intimately linked with its aesthetic appeal that some courts have applied a presumption that anything adding to that appeal is not entitled to copyright protection (e.g. the 2nd Circuit in Jovani Fashion, Inc. v. Fiesta Fashions. The majority in Varsity Brands, however, rejects this reasoning, citing concerns about the overbreadth of any principle that deems aesthetic value utilitarian, and therefore denies protection to any work inextricably linked with that function.
However, even accepting that aesthetic value is not a sufficiently functional goal to deny protection under the useful articles doctrine, clothing can also serve the purpose of identifying its wearer. Like garments’ aesthetic aspects, this goal has been found to be sufficiently central to the function of clothing to deny copyright protection to elements serving to identify the wearer (e.g. Galiano v. Harrah’s Operating Co., Inc., holding that garments’ function as casino uniforms defeated their copyrightability). In this respect, too, the Varsity Brands majority opted for a much less restrictive conception of the functional purposes of clothing, focusing on their suitability for athletic activities.
While the case has been remanded to the district court, and is therefore ongoing, the immediate upshot of the Varsity Brands case would seem to be a relatively liberal application of the separability doctrine to fashion in the 6th Circuit (and potentially beyond, depending on whether sister courts find its reasoning persuasive), opening the door to a greater number of fashion copyright infringement claims. Moreover, while it did not do away with the widely-maintained distinction between fabric design (i.e. patterns printed on the fabric) and dress design (the shape and style in which fabric is converted into clothing) (1 NIMMER ON COPYRIGHT § 2.08[H]), the court’s reasoning regarding the utilitarian purposes of clothes would seem to leave room to seek protection for any element—whether graphical or sculptural—that is not necessary to the garment’s most basic function.
Perhaps more importantly, though, Varsity Brands underscores—nowhere more explicitly than in the dissent, which acknowledges that neither its conclusion nor the majority’s is inevitable—the inconsistency in dealing with this area of law, and the resultant need for guidance and clarification from either Congress or the Supreme Court. The apparent lack of interest on the part of either of those bodies in tackling the problem—the Innovative Design Protection Act, proposing copyright-like protection for clothing designs, has languished since its introduction in 2012—means that such a solution may not be imminent, but the mounting frustration of circuit courts can only serve to increase the pressure to tackle the problem. Until then, the courts will continue to use the insufficient tools at their disposal to arrive at inconsistent results.
Carl Mazurek is a J.D. candidate, 2017, at NYU School of Law.