Is fashion Design Copyrightable?

*** The writing does not, and is not intended to, constitute legal advice by any means***

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Is fashion design eligible for copyright protection? I guess this is the question that everyone has wondered at some point. The lawyerly answer: well, it depends. Let's get to the heart of the matter.

In 2017, the Supreme Court grappled with the question of whether copyright subsists in a two-dimensional design on a cheerleading uniform consisting of chevrons and shapes. See generally Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 197 (2017). The Supreme Court held that a design feature incorporated into a useful article (in this case, the cheerleading uniform) merits copyright protection if the feature satisfies the following two conditions. First, the feature "can be perceived as a two- or three-dimensional work of art separate from the useful article. Second, it "would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article".

One may wonder what's all this fuss about separability? It's because the federal statute does not grant copyright protection to a "useful article", which includes clothing. (See 17 U.S.C. §101, providing that a useful article is "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information".) Therefore, a design feature interwoven on the surface of a clothing is not technically entitled to copyright protection unless there's a way to physically or mentally separate it from the clothing. Before the Star Athletica decision, circuits across the nation were adopting their own separability tests. (It is beyond the purview of this post to learn what those tests were, but it is fair to say that it was a doctrinal mess.) One of the core jobs of the Supreme Court is to resolve the circuit split for the sake of clarity and consistency, and hence this two-prong test.

Is fashion design now having its heyday? Indeed, applying the two-prong test, subsequent courts have found certain fashion designs to be eligible for copyright protection, even for a banana costume. See generally Silvertop Assocs. Inc. v. Kangaroo Mfg. Inc., 931 F.3d 215 (3d Cir. 2019). There however lurks a danger with the over-broad application. If a simple cheerleading design consisting of lines and shapes is copyrightable, why can't more sophisticated ones? From the policy perspective, there will be little left for designers if, all of a sudden, designers rush to the Copyright Office to register their designs. The dissenting justices echoed this worry when they pointed out that, under the current copyright law regime, copyright protection is afforded to designers who came up with original textile designs. (Originality is a requirement for copyright protection, but the Supreme Court held in Feist that judges are not an arbiter of artistic merit and thus a modicum of creativity suffices. See generally Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991)) In addition, trademark laws, specifically the Lanham Act, provide additional layer of protection because knockoffs dilute the commercial value of a design coming from a renowned fashion brand and confuse customers in the marketplace. Even from a legal standpoint, the dissenters belabor the point that simply extracting the design portion from the useful article onto which it is seamlessly integrated is not what separability truly means. So we, the fashion industry, need a more fine-tuned standard for determining which design should be really copyrightable after all. The Star Athletica two-prong test, in that sense, has more questions than answers.

Justice Thomas, who penned the majority opinion, started out by saying "the line between art and industrial design is difficult to draw". Will the demarcating line ever be drawn?