Aaron L. Parker and Margaret A. Esquenet are attorneys at Finnegan LLP. Courtney A. Bolin is a law student at the University of North Carolina at Chapel Hill.
Athleisure involves designing fashionable sport and fitness apparel that allows consumers to easily transition from athletic activities to casual-dress occasions—such as meeting friends for lunch. The trend has continued to gain popularity over the past decade, and the marketplace has quickly become saturated with brands catering to athleisure wear for a variety of audiences.
With the influx of competition in the marketplace, it is important for athleisure brands to consider the full range of intellectual property (IP) options that are available to protect their designs. Traditionally, most athleisure companies seeking IP protection were limited to enforcement through trademarks and patents, but in the past year copyright protection has become a more viable option. This change is largely the result of a Supreme Court decision involving cheerleading uniforms that changed the way that “useful articles,” such as athleisure wear, are treated under copyright law.
A Copyright Primer – The “Useful Article” Limitation
In the United States, copyright law protects original works of authorship that are fixed in any tangible medium of expression. An original work of authorship is a work that is created by a human author, was not copied from another source, and possesses a minimal degree of creativity.
But copyright protection is limited if the expression is considered a “useful article.” As its name suggests, a useful article is something that has an intrinsic utilitarian purpose and is not merely aesthetic in nature. For example, clothing and shoes are considered useful articles because they serve the useful purpose of covering the body in addition to their aesthetic design.
Courts have historically found it difficult to determine which items deserve copyright protection and which should be barred from copyright protection as useful articles. In fact, copyright law has offered inconsistent and unpredictable protection for the aesthetic elements of useful articles. For example, in one of the first cases to deal with this issue, Mazer v. Stein (1954), the Supreme Court addressed whether a table lamp with a statuette-base in the shape of a Balinese dancer could be protected under copyright law or if the statuette-lamp base was precluded from copyright protection as a useful article. In that case, the Court observed that the artistic components of a useful article may be protected when those elements are separable. While Mazer indicated that useful articles could receive protection, determining how to separate the useful and ornamental elements of a work continued to challenge courts for more than 60 years and led to seemingly conflicting results.
Useful articles possessing ornamental elements that could not be physically severed from their utilitarian function seemed to cause courts the most angst. In one case, Kieselstein-Cord v. Accessories by Pearl, Inc. (1980), a court held that a stylized belt buckle’s ornamental design could be conceptually severed from the belt buckle’s utilitarian function and granted copyright protection. However, in another case, Brandir Int’l, Inc. v. Cascade Pacific Lumber Co. (1987), a different court held that a stylized bike rack was not protectable because the rack’s design was significantly influenced by function.
Most recently, in 2016, to address the inconsistent results created by the Kieselstein-Cord and Brandir decisions, as well as other divergent decisions, the Supreme Court agreed to hear a case involving useful articles and cheerleading uniform designs: Star Athletica v. Varsity Brands.
Star Athletica’s Impact on Copyright Law and the Athleisure Industry
Star Athletica v. Varsity Brands involved a dispute between manufacturers of cheerleading uniforms. Varsity Brands owned copyright registrations for over 200 two-dimensional designs that primarily consisted of chevrons, stripes, and other shapes arranged on cheerleading uniforms and other garments. Varsity Brands sued Star Athletica for copyright infringement of those designs.
In its decision, the Supreme Court erased the multiple tests developed by lower courts and replaced them with a new two-part test for determining when the aesthetic elements of a useful article are protected by copyright law. The Court held that “a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two-or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work — either on its own or fixed in some tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.”
When the Supreme Court applied the test to the uniform designs, it held that the two-dimensional designs of the cheerleading uniforms were protectable under the Copyright Act as separable features of the design of the cheerleading uniforms. The Court reasoned that the decorations had copyrightable qualities, and that those qualities, if separated from the garment—for example, drawn onto a croquis—would qualify as two-dimensional works of art.
What Does Star Athletica Mean for the Athleisure Industry Moving Forward?
Following Star Athletica, it is important to remember that works must meet the requirements of copyright law to receive protection (recall, copyright law protects original works of authorship that are fixed in any tangible medium of expression). While Star Athletica may open copyright protection doors to industries that have typically been excluded from considering such protection, it does not guarantee that any particular product will be found original enough to warrant copyright protection.
That said, the test developed by the Supreme Court in Star Athletica has the potential to change how companies in the athleisure industry approach copyright law. For example, not even two weeks after the Star Athletica opinion was issued, Puma sued Forever 21 alleging that the fast fashion retailer was “knocking off” Puma’s line of Fenty® shoes, produced in a collaboration with Rihanna. The case focused on Puma’s design patents and alleged trade dress; however, following Star Athletica, Puma filed copyright applications for several shoe designs. Puma then amended its complaint against Forever 21 to add a copyright infringement claim based on the recently issued copyright registration applications.
Even more recently, in Silvertop Associates, Inc. v. Kangaroo Manufacturing (2018), a district court held that a banana costume (see below) possessed features that made it reasonably likely for the banana costume’s copyright owner to prevail in court. These features included the length and shape of the costume, a black tip at both ends, and the location of the head and arm cutouts.
What is the Current State of Copyright Law for Athleisure Wear and Why Should You Care?
Following Star Athletica, copyright protection is much more likely to apply to athleisure wear. As previously mentioned, copyright protection has historically been unpredictable and difficult to obtain for useful articles (such as shoes and clothes). Below, we’ve listed some of the potential benefits of copyright law that we believe are noteworthy following Star Athletica.
- Copyright protection may be used to supplement trademark protection of trade dress while the brand establishes “secondary meaning” (also called “acquired distinctiveness”) under trademark law. Under trademark law, product configuration may establish trademark protection when the design is not functional, and the product configuration has developed secondary meaning. Secondary meaning occurs when trade dress gains recognition as indicating the source of the good. An example of trade dress with acquired secondary meaning that is entitled to trademark protection is the red sole on a pair of Christian Louboutin pumps (so long as it contrasts with the top of the shoe). However, the process of establishing secondary meaning may take years to establish (and it is sometimes not possible for a brand to establish secondary meaning). Conversely, trademark law protects logos and phrases that may not be protectable by copyright law, and a trademark can last forever (unlike copyrights, which all expire eventually). Additionally, copyright law protection begins immediately after the requirements are met (the three requirements of copyright are: originality, human authorship and fixation) and without registration (however, registration is wise because of the advantages that it provides to the copyright owner–including the right to enforce in court).
- Copyright protection may be used to supplement the protection given with design patents. Unlike patent law’s novelty and nonobviousness requirements, copyright law requires that a work be “original,” which may be an easier requirement to meet than what is required by patent law. Additionally, the wait time to receive a copyright registration is short. Conversely, design patents are enforceable without a showing of copying and improper appropriation, as copyright law requires. Because of the low cost and quick issuance of copyright registration certificates and the unique advantages offered by patent law, it may make sense to apply for both a design patent and a copyright.
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With greater certainty that the aesthetic elements of useful articles will receive copyright protection, the benefits of copyright law may be more readily available to the athleisure industry. Some of these benefits include:
- Inexpensive and quick registration ($55 filing fee–expected to increase by $20 soon–with an average processing time of seven months), and long-term protection (for a corporate work, a copyright’s term expires 95 years after the work is published);
- Access to claims for statutory damages (and possibly attorney’s fees) upon prevailing in a copyright infringement lawsuit if the copyright is registered within three months after first publication or before infringement began; and
- Registration allows the U.S. Customs and Border Protection (CBP) to seize pirated copies of registered works, if the registrations are properly recorded with CBP.