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The US Supreme Court’s decision in Star Athletica v Varsity Brands brings a sigh of relief for the fashion industry, according to IP lawyers.

Yesterday, March 22, in a 6-2 decision the court backed Varsity Brands in its dispute with clothing company Star Athletica, holding that decorative elements of a cheerleading uniform may be protected by copyright law.

Certiorari had been granted by the court to “resolve widespread disagreement” over the proper test for implementing section 101.

“The ruling is a sigh of relief for fashion innovators and IP lawyers alike. There is now no doubt that applied art on clothing is protectable under the copyright law,” explained Michelle Mancino Marsh, partner at Arent Fox.

According to Marsh, the court kept closely to the statute and rejected complicated tests.

“I think the impact of the ruling is to reinforce the value of copyright in applied arts, in particular for the apparel industry,” she added.

In its decision, the court held that a feature incorporated into the design of a useful article is eligible for copyright protection if it satisfies two grounds.

First, the feature must be able to be perceived as a 2D or 3D work of art separate from the useful article.

Second, that feature would have to qualify as a protectable work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.

John DiMatteo, partner at Holwell Shuster & Goldberg, added that the decision is a “big step forward for clothing designers” and that the court “greatly expanded” an important IP right.

“While it is too early to predict the consequences of the decision, we can expect clothing designers to file more copyright registrations and ask for higher prices to use their copyrighted designs, as well as filing additional lawsuits against parties that shamelessly copy those designs,” he said.

Justices Breyer and Kennedy dissented, explaining that they didn’t agree that the designs Varsity Brands had submitted to the US Copyright Office are eligible for copyright protection.

Laura Ganoza, partner at Foley & Lardner, said she was not surprised Breyer wrote the dissent.

“Given his questions at oral argument, his scepticism about using copyright laws to protect fashion designs was very apparent. He reiterated these concerns on the dissent by pointing out that other forms of IP protection like design patents and trademarks are still available,” she said.

Tony McShane, co-chair of Neal Gerber Eisenberg’s IP practice group, explained that the decision doesn’t provide an objective basis/test for determining when a design may be imagined separately from an article itself, leaving that issue “open to debate in each case on an ad hoc basis”.

He added that the court expressly noted that the test it adopted doesn’t cover the shape, cut and physical dimensions of the specific cheerleading uniforms at issue in the case.

“That note appears to beg the question whether the ‘shape, cut and physical dimensions’ of a more unique or original uniform (or other product) could ever be designed in such a way as to meet the court’s new test. We can expect that to be the subject matter of future cases,” said McShane.


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