In a recent decision, Germany’s Federal Court of Justice held that Birkenstock’s sandal design was not eligible for copyright protection. The court held that Birkenstock sandals did not display sufficient creativity to be considered as works of applied art. Instead, the shoes were designed with functional goals in mind, such as producing comfortable and marketable shoes.
Fashion designers may face similar challenges when seeking copyright protection for clothing designs in the United States. In Star Athletica v. Varsity Brands, the U.S. Supreme Court decided whether cheerleader uniforms should be entitled to copyright protection. The Court identified a two-prong test for the copyrightability of “useful articles” like clothing. The first prong, known as the “separate identification” requirement, asks whether some part of the article can be perceived as a work of art separate from the useful article. The second prong, known as the “independent existence” requirement, asks whether the separable feature would “qualify as a protectable pictorial, graphic, or sculptural work . . . if it were imagined separately from the useful article into which it is incorporated.”
This test may be easier to satisfy when a fashion designer seeks to protect geometric designs on clothing, such as two-dimensional fabric patterns or non-functional three-dimensional features, like the arrangement of lines and chevrons on cheerleader uniforms. These features may be considered works of art separable from the useful clothing features under the first prong. And if these geometric features are sufficiently creative on their own, they would qualify as protectable works under the second prong.
In contrast, the test may be harder to satisfy when a fashion designer seeks to protect the overall design of the clothing. For reasons similar to those the German court adopted in the Birkenstock case, it may be difficult to establish an overall design is a work of art separate from the clothing and thus satisfy the first prong of the Star Athletica test. In Star Athletica, the Supreme Court concluded that even if the arrangement of lines and chevrons on the uniforms was copyrightable, the overall shape of the uniform was not entitled to protection because it was functional.
Nonetheless, some fashion designers have successfully maintained U.S. copyrights on the overall design of clothing. In Silvertop Associates, Inc. v. Kangaroo Manufacturing Inc., the Third Circuit considered whether copyright protected the shape of a banana costume. Star Athletica notwithstanding, the Third Circuit held that the overall shape and design of the banana costume was copyrightable. When separated from the cutouts for the wearer’s arms, legs, and face, the banana design did not resemble clothing. Rather, it resembled a sculpture of a banana. In contrast, the court reasoned, the cutout hole configuration of the banana costume made it wearable, and thus, like the shape of a cheerleader uniform, will inevitably resemble a useful article (clothing). Thus, while standard fashion designs like the shape of cheerleader uniforms likely fall outside of copyright’s purview, more abstract or avant-garde clothing may be copyrightable. Would Birkenstock sandals face a similar outcome in the U.S. as in Germany, or could U.S. courts be convinced that something in the design is sufficiently separable and creative to warrant copyright protection?
