This is a good moment for everyone in the fashion business to stop, breathe and consider the implications of the biggest shift in the interpretation of American intellectual property law to have affected the trade in decades. Fashion law in the United States has changed significantly in a way unique to the common law legal system: Although not a single word has been altered in any statute, what we know now about the protectability of fashion designs is very different from what we thought we knew a very short time before.
Quite before my time, my firm won the case that is said to have started it all when the U.S. Court of Appeals for the Second Circuit, acknowledging it was addressing claims “on a razor’s edge of copyright law” as understood at the time, held that the non-utilitarian elements of belt buckle designs were protectable under the Copyright Act. Kieselstein-Cord v. Accessories by Pearl, 632 F.2d 989, 990 (2d Cir. 1980).
Since then, there have been efforts to amend the Copyright Act expressly to include fashion designs. Sen. Charles Schumer of New York had worked to make that happen. Indeed, when I questioned the senator some years back, he expressed considerable optimism about passage—but the various attempts led only to legislative dead ends. Then came the Supreme Court, which, like the cavalry riding to the rescue in an old Western, interpreted the Copyright Act to bring greater protection to key elements of fashion and accessory designs than many had thought possible—not for the shapes of the wearable items themselves (that was never an option), but for the non-functional patterns and forms that are included within them.
We must offer thanks to what is one of the many culturally sacrosanct whims of American adolescence: the cheerleader uniform. At issue in Star Athletica v. Varsity Brands, 137 S. Ct. 1002 (2017), was what among the prosaic design elements of cheerleader uniforms—specifically “colors, shapes, stripes, and chevrons” (id. at 1012)—could be protected by copyright. In the preceding decades, the 13 federal circuit courts had managed to come up with (depending on who was counting) between eight to 10 different standards and variations of standards to by which to try to parse out, physically or merely conceptually, the pictorial, graphic or sculptural elements of designs in order to decide if they were protectable. In a surprise to many in the intellectual-property bar, the Supreme Court fairly well chucked all prior standards, holding, with commendable simplicity:
an artistic feature of the design of a useful article is eligible for copyright protection 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 in some other medium if imagined separately from the useful article.
Id. at 1016.
In other words, it does not matter if a fabric pattern is cut into the shape of a cocktail dress or necktie. The key now is if you could simply imagine putting a frame around the pattern and could call it original art, you could get a copyright. The same would hold true for any sculptural work, be it an original rendering of an alligator that serves as a belt buckle (consider Kieselstein-Cord) or a lamp base. See Mazer v. Stein, 347 U.S. 201 (1954): If it would be an original work of sculpture when placed on a pedestal, it is art and therefore copyright-protectable. Anything so imaginable, even if what was actually created was part of something (such as a garment) that is useful, it is protectable.
As surprising as Star Athletica had been to the intellectual-property bar, under the heading of, “We knew this day would arrive,” Fourth Estate Public Benefit v. Wall-Street.com, 139 S. Ct. 881 (2019) came, which resolved another conflict among the circuits relating to something quite unique in copyright as practiced in the United States. Unlike the European Union, not only does the U.S. Copyright Office maintain a registry of copyrights, but also the Copyright Act will not permit a lawsuit to protect a U.S. work to commence in federal court until registration has been secured. The split was that some circuit courts of appeal, surely in a gesture to help those with legitimate claims who were caught by surprise when arriving at this toll booth along the road to securing their rights, had hurriedly applied to register so they could commence action. Those courts sympathetically deemed register as used in the statute to mean apply. Other circuits had held that register really meant register—and in Fourth Estate, the Supreme Court agreed. Justice Ruth Bader Ginsburg added, at the end of the unanimous opinion, that, “Registration processing times have increased … to many months today,” but that was for Congress to resolve. Id. at 892.
On the heels of that latest reaffirmation of statutory tough love that the United States has historically shown to copyright holders, the Copyright Office, through its Review Board, offered another surprise, reversing itself on a long-standing claim by adidas to have two versions of its Yeezy style of woven sneaker registered; in a letter ruling of May 8, 2019, citing Star Athletica, it allowed registration, citing both two-dimensional and three-dimensional elements now deemed protectable. Given that, as is often said, the bar of protectable originality is set quite low, the door to the registration of many elements previously thought unprotectable has apparently been opened.
Just as we were absorbing what happened in copyright, the Supreme Court went over to the trademark side of fashion IP, deciding, in Iancu v. Brunetti, 139 S. Ct. 2294 (2019), that the part of the Lanham Act (the federal trademark act) barring registration of marks that were “immoral” or “scandalous” was unconstitutional. If cheerleading uniforms can be seen as either shrines or vestigial irritants of Americana (your call on that one), there is a corollary cultural stream of American coarseness in expression. That explains why the mark at issue in Iancu was FUCT, as used for a clothing line.
In short, U.S. intellectual property law, as applied to fashions and accessories, looks remarkably different from what it appeared to be back when the great Jack Kernochan taught me copyright and trademark law at Columbia. If you think you have an original work of design—patterns in two dimensions or shapes in three dimensions—register it. You can do it online at www.copyright.gov, and with a little practice, it is about as easy as getting your license at the DMV—except it is even slower, so do it as soon as you are sure you have created something original.
Although, under the Berne Convention, as owners of works that typically stand outside the statutory definition of U.S. works, designers in EU nations do not need to file a registration to start a lawsuit in federal court, they should consider doing it anyway. It is not merely that a U.S. registration certificate is a useful thing to attach to a cease-and-desist letter and, of course, to present to a court when seeking injunctive relief. The copyright in a non-U.S. work must be registered whenever seeking two benefits given to copyright registration holders that are generally not available in U.S. litigation: statutory damages (which might add up to more than would be provable as actual damages) and attorney fees. Add the fact that a registration certificate carries with it the presumptive validity of an American copyright and it becomes a fine investment for $55.
Does that mean registering each piece in a line individually? The short answer is that, although there are good reasons to do that, you can seek to enforce the copyright registration of a catalogue or line sheet against the infringement of a single item shown in either. For considering when a group registration would be granted, see U.S. Copyright Office, Circular No. 34 and 37 C.F.R. §§201-202 (2019).
From a European point of view, American law is upside down: We insist on registration of copyrights for U.S. works, but registration of trademarks for goods sold here is still optional. Best practice is to register trademarks and service marks in the United States anyway in order to maximize the potential legal effectiveness of the marks. That is true even if the mark you are hoping to protect is so vulgar, you would not whisper it to your grandmother. Such are the times we live in that today’s vulgarity may be tomorrow’s blockbuster, and you do not want to be caught with holes in your wall of protection should the infringers come out in force.
As for what further changes may yet come: As a great Parisian chef recently told me about haute cuisine, “If I knew the future, I would do it today.” We will just have to exhale and wait and see.
Alan Behr is the chairman of the fashion and luxury goods practice at Phillips Nizer. Candace Arrington, a member of the firm’s intellectual property practice, assisted in the research for this article. Francesca Renzetti and Bianca Bortolussi, both candidates for Italian masters of law degrees, provided assistance with EU law.