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Give me an I! Give me a P! Copyright and Sports Apparel

Give me an I! Give me a P! Copyright and Sports Apparel by Awani Kelkar

April 25, 2019

Almost all of us have watched, played or been forced to participate in some sort of sport. It brings us together, inspires us, makes us healthier and — to a great extent — happier. This World IP Day, we delve into the intersection of intellectual property and sports. The World Intellectual Property Organization’s campaign for 2019, “Reach for Gold,” examines how “innovation, creativity and the IP rights that encourage and protect them support the development of sport and its enjoyment around the world.”

For example, let’s take a look at the impact of copyright law on sports apparel, such as team uniforms and jerseys. Although primarily protected through trade-dress and design patent law, a recent Supreme Court decision, Star Athletica LLP v. Varsity Brands, helped shed light over when creative works incorporated onto clothing can be protected by copyright.

As provided in Section 102 of the Copyright Act, copyright protection subsists in original works of authorship, fixed in any tangible medium of expression. The provision enumerates eight categories of “works of authorship,” including “pictorial, graphical and sculptural works” (PSG works), which covers two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions. However, the Copyright Act has special rules regarding copyright and “useful articles,” which are defined as those articles which have an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Under 17 USC §101, a PSG work includes the design of a useful article only if, and only to the extent that: 1) such design incorporates pictorial, graphic, or sculptural features that can be identified separately; and 2) capable of existing independently of, the utilitarian aspects of the article. Thus, the statute aims to protect only the artistic elements of a useful article and not their ‘mechanical or utilitarian aspects.

For example, in Mazer v. Stein, the U.S. Supreme Court held that an elaborate statue of a Balinese dancer, which formed the base of an electric lamp, could be protected under copyright law, despite it also serving an obvious utilitarian function. So, the creator of the statute was/is entitled to the same rights as an author of any other category of work of authorship.

The biggest challenge, however, is drawing a distinction between the utilitarian and artistic features of a useful article and determining which of them merit copyright protection. Despite the presence of express language in the statute, the separability analysis had confounded scholars and courts, giving rise to circuit splits over the applicable test. In Varsity Brands, LLC v. Star Athletics, the Sixth Circuit identified nine different prevalent approaches to determine separability of designs of useful articles. The Supreme Court granted certiorari and its decision in Star Athletica v. Varsity Brands established a single uniform standard to determine the copyrightability of designs incorporated in useful articles.

The case centered around two competing manufacturers of cheerleading uniforms and the alleged similarities in their uniform designs. Varsity Brands, which registered copyrights in 2D designs consisting of curves, stripes and chevron lines that appeared on cheerleading uniforms, sued Star Athletica for copyright infringement. The Supreme Court held that a feature incorporated into a design of a useful article is eligible for copyright protection only if the feature: (1) can be perceived as a work of art separate from the useful article; and (2) would qualify as a protectable pictorial, graphic or sculptural work if it were imagined separately from the useful article into which it is incorporated.

The two-part analysis basically focuses on whether the design can be construed as being separate from the functional aspects of a useful article and thus meriting copyright protection. The Court says the first requirement is satisfied if the decision-maker can look at the useful article and see a 2D or 3D element that has pictorial, graphic or sculptural qualities. Simply stated, if one were to look at a team jersey and be able to identify a picture such as of a team mascot, the first requirement is met. The more challenging element is the separability analysis — here, one would have to imagine the element as distinct from the jersey and determine whether it can exist separate from the utilitarian function of the jersey. The Court asks us to imaginatively remove the surface design from the uniform and apply it to another medium, like a piece of paper, and see if the entire uniform is being replicated. If that is not the case, and the picture can exist separately on the piece of paper, then it has satisfied both requirements of the analysis and qualifies for copyright protection.

The Supreme Court thus held that the 2D designs appearing on Varsity Brand’s cheerleading uniforms could be protected, provided they meet the other requirements under copyright law. These include showing that the PSG work is original and fixed in a tangible medium. To establish originality, an author needs to prove that the work was independently created and contains a modicum of creativity. As long as the work is not copied from another and is the result of the author’s own creativity, the work has been independently created. The threshold of creativity is not high under copyright law, requiring only a “spark” or “minimal degree” of creativity.

After Varsity Brands, sports teams and other manufacturers have a clear test for determining when copyright can protect sports apparel against counterfeits and other infringement. Just another reason to celebrate copyright during World IP Day 2019.

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