Bring it On! Cheerleading Uniform Company Knocks the Knock-Off…and Wins!

“You’re killing knockoffs with copyright,” Justice Sonia Sotomayor said to William M. Jay, the lawyer representing Varsity, during oral argument on October 31, 2016. “You haven’t been able to do it with trademark law. You haven’t been able to do it with patent designs. We are now going to use copyright law to kill the knockoff industry.”

What began as a simple cartwheel has over time advanced into fancy lifts and flips – and we mean this both figuratively and literally. Copyright protection in the U.S. was first established by the Copyright Act of 1790 for the original authorship of “books, maps, and charts.”

Today, the Copyright Act of 1976 expands such protection to include many additional works of authorship, including “pictorial, graphic, and sculptural works.” Copyrights protect form and design but not utility.  And therein lies the twist: all a copycat needs to argue is that the design has utility and the work cannot be protected by copyright law. A new Supreme Court ruling may deserve applause for making it easier to defeat these copycats.

Last year, Varsity Brands, LLC, a global leader in cheerleading uniform design and manufacturing, stepped off the sidelines and accused Star Athletica, LLC of copying its uniform designs in the U.S. Supreme Court. The Varsity squad holds 200+ U.S. copyright registrations for two-dimensional designs of various lines, chevrons, and colorful shapes appearing on the surface of their uniforms and other garments. Star sells identical uniforms for much less – and reasoned to the Supreme Court that such market competition should be supported because Varsity’s design features were utilitarian and therefore not copyrightable. Star argued that the lines, chevrons and shapes kept the cheerleaders noticeably slim in appearance and that this was a useful purpose indeed.

The Supreme Court disagreed and in doing so changed the playing field for businesses to fight back against knock-off companies.

In a 6-2 ruling, the Supreme Court made it harder for knock-off companies to claim that designs can’t be protected by copyright registration because they have utility. The Court wrote that the law does not require the underlying useful article remain after the artistic feature has been imaginatively separated from the article; a literal interpretation of the statutory requirement requires only that the artistic feature be capable of existing independently from the useful article.

Essentially, the court held that if the designs could be protected if applied on a painter’s canvas, they can be copyrighted even on a functional article such as a uniform.

The flyer tumbles without the support of a strong base; the knock-off company cannot survive with such expansive copyright protections in place. This recent Supreme Court ruling has broad implications for the ability of businesses to protect their original industrial designs and stop knock-offs by way of copyright law.

In practice, such businesses now have a higher degree of protection in their registered copyright designs and a stronger claim for infringement against those manufacturing similar products with identical design features.

Click here to read the full court opinion and please do not hesitate in contacting us to better understand your options and receive legal assistance regarding your intellectual property protection and prosecution.

Article brought to you by:
Susan E.B. Cook
Associate
Woods Rogers PLC

Fourd H. Kemper Jr.
Of Counsel
Woods Rogers PLC