Straight off the heels of a 2-1 Sixth Circuit decision protecting copyright in design elements of cheerleading uniforms, the U.S. Supreme Court today decided to consider the issue of when a useful article is protectable under the Copyright Act. This opens the door for the Court to weigh in on the long-debated question that fashion brands, legal scholars, and even the courts have been scratching their heads over for years: whether apparel can be protected under U.S. copyright law.

Copyright protection for fashion design has been a hot issue among designers and industry groups. Clothing and other fashion items are usually considered useful articles that are not afforded copyright protection. Copyright will protect certain original elements of an apparel design where those elements can be separated from the useful function of the item. The federal circuits have used at least nine variations of a "separability test" to determine whether the ornamental and copyrightable portions of a design can be separated from the article's useful function.

In this case, rival cheerleading uniform companies, Varsity Brands, Inc. and Star Althetica, LLC, have been battling over whether cheerleading uniform design elements consisting of stripe, chevrons, color blocks, and zigzags are protected under U.S. copyright law.

The district court agreed with Star Athletica, finding that the design elements could not exist independently of the utilitarian function of a cheerleading uniform.

The Sixth Circuit, upon reviewing several other circuits' analysis of whether certain elements could be separated from its utilitarian function, ruled that Varsity's uniform design elements could exist independently of its utilitarian function and therefore were copyrightable. In its opinion, the Sixth Circuit created and applied a new separability test. However, both the majority and dissenting opinions noted that there are several ways to approach the separability analysis and that there is no clear method.

In its cert petition, Star Athletica argues that the Sixth Circuit decision and the multiple separability tests have "immense practical implications" on the fashion industry. Its concern is that protection for fashion design elements now turns "entirely on the Circuit where the copyright action is litigated."

Courts agree on the need for clarity. The dissenting judge in the Sixth Circuit decision went so far as to say that, "the law in this area is a mess … But until we get much-needed clarification, courts will continue to struggle and the business world will continue to be handicapped by the uncertainty of the law." Now the Supreme Court has the opportunity to set the standard and create an ultimate "separability" test that will help determine future fashion copyright cases to come.

The Court will most likely consider this much anticipated copyright question in the next term, which begins in October 2016.

Ballard Spahr's Fashion Law Group is a national team with decades of experience in the fashion industry. Our Fashion Group includes attorneys who focus on intellectual property, business and finance, data security, litigation, labor and employment, and real estate.

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