With the U.S. Supreme Court recently deciding in the Star Athletica v. Varsity Brands case that graphic elements on cheerleading uniforms can be protected under Section 101 of the Copyright Act, a conversation has emerged among designers and fashion experts, wondering how the ruling may impact the ever-growing industry. Hillary Kane, an adjunct associate professor of law at Southwestern Law School and Of Counsel at altView Law Group LLP,  discusses the concerns of many about this case and its connection to Entertainment Law in this Q-&-A:

Q.—Based on your expert knowledge, which segments of the fashion industry do you believe will be most affected by this ruling? What are the positive and negative effects of the decision?

A.—I am very resistant to lumping cheerleading uniforms into what most of us consider fashion. Fashion at its finest involves high levels of training, creativity, innovation, and passion. A cheerleading uniform? Not so much. It is very likely that the designs in questions will not be sufficiently original to qualify for copyright protection after they are “imaginatively separated” from the uniform using the new test.

The many attempts to expand copyright protection to fashion design have failed.  The Supreme Court was very careful to emphasize that its ruling was not extending copyright protection to clothing. Maybe we should just accept this and move on? All the Varsity ruling does is establish the test all courts should apply to determine if the design elements on a uniform are copyright worthy independent from the garment.

Next fall, I will be substituting Conceptual Separability with Imagined Separability and working through the new test in my Fashion Law course. I am not sure the result in this case would be different applying another one of the prior nine to 12 tests, now superseded.

The fashion industry segment most likely to be affected is cheerleading uniforms, and perhaps other types of uniforms.  Now, instead, of being well-settled that there is no copyright protection for any uniform elements, companies have a new basis on which to sue each other. It may get incredibly complicated. What happens when a university claims it has trademark rights in a design Varsity tries to copyright? (There is a U.S. Fifth Circuit Court of Appeals trademark case that speaks to this: Louisiana State University v. Smack Apparel Co.)

It is great material for a law school exam, but not likely to lead to anything other than lawsuits in real life.

Q.—Practitioners who read this blog mostly focus on Entertainment Law. But, based on your experience in Fashion Law, are there ways this Supreme Court ruling will impact the Entertainment industry? Who in Hollywood may benefit, and how might it affect movies, TV series, and the like?

A.—At most, it will cause costuming departments to run more garments by legal. All uniform-type designs may end up being dumbed down to avoid issues. The Entertainment industry already engages in many voluntary practices to avoid copyright and trademark conflicts (blurring logos, waivers when filming in public places, deliberate product placement, etc.) I cannot imagine that this will have much of an impact. There is no blanket rule prohibiting characters from wearing clothing that may contain copyrighted elements (a graphic or textile design)—although it is not uncommon to obfuscate them—usually motivated by non-copyright related concerns.

Q.—With the Supreme Court’s ruling, do you suspect that there will be an increase in designers’ attempting to copyright design elements, versus the typical filing of patents for protection? What would be the advantage of being able to file for copyright protection, rather than a patent?

A.—I am not sure that there will be much overlap between a design patent and copyright.  Prints and patterns woven into or applied by silk-screening, embroidery, applique etc. have long been eligible for copyright protection if they passed whichever prior separability test was applied.  The real test is the originality and non-functionality of design itself.

Another thing to remember is that patent protection is for a much shorter time than a copyright.  After the design patent expires—14 years from the grant date—the design is fair game.  Copyright protection typically lasts for the life of the author, 70 plus years.  Overlap with trademark issues might occur if secondary meaning is acquired during a patent-copyright lifespan.

But again, this decision is limited, it does not extend to the cut, lines, etc. of the actual garment; only to the two-dimensional design of the chevrons, stripes and zigzags applied to it.

Q.—Does the copyright principle scene-a-faire apply to Fashion Law in any way? If so, in what capacity?

A.—This is probably more of a question for Prof. Lind [the Biederman Institute’s co-director and a recognized expert on intellectual property law and copyright]. However, the concept is relatively simple and could very well come into play. Courts prevent the monopolization of an idea when there are very few ways to express it.  If you are inspired by a copyrighted Betsy Johnson floral print, your floral print might need to be substantially similar in order to be considered copyright infringement. If you are inspired by a copyrighted photo of a single rose on a table, a much narrower concept, your textile version would likely have to be virtually identical to infringe on the original.

I teach the scene-a-faire concept in Fashion Law, but I am going to start using the French term!

Here, the lower court may determine that there are very few ways to arrange a limited number of decorative item on a cheerleading uniform. That would dictate the item be entitled to either no copyright protection or to only very thin protection from “virtually identical” versions.

Q.—Should the lower courts determine on remand that the elements used on Varsity’s cheerleading uniforms are original enough to warrant copyright protection, based on your expertise, do you believe the U.S. Copyright Office will see an abundance of newly filed claims? Also, if more copyrights are filed and accepted, how will this impact the creativity of designers and the amount of  look-a-likes seen in the apparel industry?

A.—That is a big IF.  I may be in denial, but I don’t anticipate the Varsity designs being considered original and non-functional enough to warrant copyright protection.  I tend to agree with Star Athletica’s lawyers who argued that the placement of the items is dictated by the shape of the garment, the body, and the utilitarian nature of the uniform.

If I am right, we just have another [Christian] Louboutin red sole situation–a win for color trademarks with an aesthetic limitation, minimal practical effect, and a lot of time, money, and resources depleted for a win-win outcome.

If I am wrong, yes. I would anticipate more protection claims for uniforms and other types of garments that were previously out of the running for copyright protection.

I do not think it changes the similarity-originality standards currently applied to non-uniform textile prints and patterns. Those will continue to be the source of copyright battles and copyright trolling.

Most of the look-a-likes, aka knock-offs, we see in the industry are legal copies.

There is even an East-West Coast divide about whether copyright protection for fashion design is appropriate. The West Coast, which appears to be winning the war, insists that there is nothing new in fashion and that inexpensive versions of high-end clothing democratizes fashion and makes style accessible to all, not just the very rich.  The East Coast preference, led in large part luxury brands and high-profile designers, wants at least limited copyright projection for the ten percent or so of designs anti-copyist proponents think are original enough to warrant protection.

The historic lack of copyright protection for fashion in the U.S. increases the importance of effective branding, consistent quality, and other types of tools to attract and maintain a loyal consumer base. You cannot sue your way into becoming an iconic brand or to ensuring market share. I would rather see large companies focus on originality, innovation and humane-sustainable manufacturing practices than suing each other over stars and stripes.

Q.—Any other thoughts to share?

A.—I think it is fantastic that the Biederman Blog included a fashion-based copyright issue. Fashion Law is still an emerging discipline that, like Entertainment Law, spans many practice areas including but not limited to real estate, employment-labor, cyber law, and other soft and hard IP. Thank you for giving me the opportunity to participate.

Kane is the founder of Raising Kane Consulting. She was trademark counsel, NBC Universal Inc., and general counsel-vice president, business development, Body Glove International. She earned her bachelor’s in psychology from the University of California, Los Angeles. She was awarded her juris doctor, cum laude, from Southwestern. She holds a certification in general management from UCLA’s Anderson School of Management. She is a member of the California and Hawaii Bars.