The Post-Star Athletica World: Maybe, Not-So-Starry

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

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A score of my followers have asked me whether design elements in clothing are copyrightable. The short answer is yes! In fact, that was the exact question before the Supreme Court three years ago when the Court handed down the supposedly monumental Star Atheltica decision. (Check out my earlier post to learn about the details of the case.) In a 5-2 decision, the majority opinion held that a design element of clothing can be protected only if the element "can be perceived as a two- or three-dimensional work of art separate from [the clothing]", and "would qualify as a protectible pictorial, graphic, or sculptural work if it were imagined separately from [the clothing] into which it is incorporated". The reasoning behind the test was that if design elements, when imagined in isolation from the works they are affixed, can be copyrightable on their own, there is no legitimate reason why they should be excluded from copyright protection. The Supreme Court ruling was meant to clear up the circuit split in which circuits across the nation came up with 12 different tests. For the most part, the fashion industry hailed the decision.

So, after three years of the decision, has the world changed for? In practice, the so-called Star Athletica test is now subsumed as part of the U.S. Copyright Office's Compendium, "the governing administrative manual" the Copyright Office relies on for determining the question of registrability. However, as the New York Law Journal nicely chronicles in its latest report, despite a huge uptick in copyright applications across the board, there has not been a comparable surge in those that can be labelled as the fashion design category. The Journal suggests that "fashion creators view Star Athletica as affording worthwhile protection in only limited circumstances". On a related note, it also points out that the industry cannot institute its own panel regulating piracy as it was banned in Fashion Originators' Guild. The Court there held that the members' collective refusal to deal with a group of distributors who sold their copycats essentially amounted to boycotting strictly prohibited under the Clayton Act.

The Journal's proposition might indeed be true. Unlike cheerleading uniforms in Star Athletica, most ready-to-wear collections showcase new and "buzz-creating" clothes that do not necessarily carry over to the next season. The situation might be different if those clothes come to enjoy a worldwide popularity, thereby being cemented into a trend that's here to stay. Plus, most designers often stay away from recycling design elements unless they lie at the core of their DNA-like archives. (Also, be mindful that it is the design elements that's being protected, not the clothing themselves.) For those here-to-stay-longer design elements, a deep-pocketed luxury brand might rather add to its IP arsenal design patents. Although design patents are much harder to obtain, they do afford protections to exterior, ornamental features. In fact, Hermès Birkin is doubly protected by design patent for its unique exterior design. Even from a practical point of view, most design elements like color combinations or shapes are so widely used in fashion that it makes little sense to assert exclusivity. So, unless a piece becomes a mega-seller and the brand sees other bad actors profiting from producing copycats, a wait-and-see approach can be cost-effective. So is this what's happening in the industry? Maybe. I'm just floating around my own theory. So feel free to share your thoughts!

P.S. My law school exam period starts next week, so I won't able to upload posts for the following week. In the meantime, feel free to check out my interviews with industry professionals!