Star Athletica and the Future of Design Litigation

For decades, the fashion industry has gone without the rigorous copyright protections that other creative industries have enjoyed. That may be rapidly changing.
Historically, copyright law has provided little protection to clothing designs. This has led to a thriving, and perfectly legal, market for knock-offs. This is because unlike paintings, movies, songs, or sculptures, clothing designs have long been considered too utilitarian to fit naturally under copyright law – a legal regime built upon the protection of the aesthetic, and one which cedes utilitarian creations to the realm of patents.
Deemed “useful articles” because of their practical necessity, clothing and its designers have long operated in a legal quagmire when it comes to intellectual property. Fashion might occasionally fit under trademark, a regime which protects markings of source, but these opportunities are rare and limited to a few truly iconic and enduring branding choices (and even then, success is not guaranteed). Similarly, careful lawyering could make patent protection  seem desirable, until one realizes that the time it takes to file a patent and then litigate for patent infringement would likely render most novel clothing designs long out-of-date due to the tumultuous pace of fashion trends.
Thus, copyright law has served as the sole, sickly means of recourse for most fashion design infringement claims. And even this recourse has been limited; only those designs which are physically or conceptually “separable” from the underlying useful article could hope to receive copyright protection. Without explicit guidance from the Supreme Court on this notion of “separability,” ten different (and sometimes conflicting) separability tests were conceived of by the various circuit courts, leading to legal uncertainty in the clothing design industry, and much wrangling by attorneys over which tests would apply to their client’s case.
Enter, Star Athletica. On March 22^nd, 2017, the Supreme Court at long last considered separability, finally bringing order to the former chaos of differing circuit tests – at least in theory.
In Star Athletica, LLC v. Varsity Brands, Inc., the Court examined claims from Varsity Brands that five of its designs for cheer-leading uniforms had been copied by Star Athletica, and that these designs were separable from the underlying useful articles and were therefore deserving of copyright protections. Further demonstrating the lack of clarity on what constitutes separability, this case’s court of origination held that the designs were not separable, while the Sixth Circuit Court of Appeals reversed while applying the same standard.
Ultimately, the Supreme Court affirmed the Court of Appeals’ holding, and in so doing created a new separability test: whereas previously separability had either depended on the hazy concepts of physical and conceptual separability, this new standard relies on a simple two-part test: to be separable, a court must find that the design of a clothing item simply (1) possesses some 2D or 3D element with “pictorial, graphic or sculptural qualities,” and (2), that these qualities are capable of existing outside of the utilitarian aspects of the article itself, on a painter’s canvass for example. While the majority made a point of highlighting in their opinion that this holding was not meant to represent a radical shift in doctrine, they may have nonetheless cracked open the lid of Pandora’s Box.
By offering limited analogies regarding what would or would not constitute a separable element under its new test, the Court has invited a wave of new litigation, each case testing the limits of this new, curious standard. Since its holding, designers of clothing items from banana costumes to sneakers have put forward claims under a Star Athletica understanding that they would not have ventured under the prior regime, and these may just be the thin end of the wedge. If bellwether cases like these succeed, you can rest assured that the fashion industry writ large will take note.
Regardless of how things shake out for cases like these, it seems that Star Athletica’s dissenters offered a sounder and more reasonable policy prescription. Justices Breyer and Kennedy aptly noted that the majority’s test might render virtually every clothing design copyrightable – a radical departure from past precedent – merely by any judge imagining the design on a piece of canvass instead of on the original article. One could hardly imagine an article of clothing that wouldn’t meet this standard, particularly considering the relatively simplistic pattern of stripes and chevrons at issue on the cheerleading uniforms in this case.
Straying from this standard as the majority has seems likely to have opened the floodgates to fashion design litigation, and to what benefit? Copyright’s lack of protections for clothing design have not been an impediment to the profitability or success of the fashion industry, nor has it harmed consumers; in fact, evidence shows that lax copyright protections in this arena have actually benefitted both consumers and the industry writ large by making fashion affordable and by accelerating the pace of fashion trends. Thus, one wonders what the future may hold for fashion design in this post-Star Athletica world, but it seems all too likely that the rapid evolution of modern fashion will slow, hampered by new lawsuits and the chilling threat thereof.
Stephen Grey is a J.D. candidate, 2020, at NYU School of Law.