Give Me a ©! Supreme Court Examines Cheerleader Uniforms and Gives Designers a Means to Protect Their Creations

By Joel Leeman. A member of our Litigation Practice Group

It’s not surprising that people who wear plain black robes all day rarely discuss clothing design.  What, then, prompted the Supreme Court justices to consider whether the arrangements of stripes, chevrons and color blocks on cheerleader uniforms are protectable by copyright?  The main reason is that the lower courts had disagreed on the correct test for determining when a graphic feature qualifies as copyrightable subject matter.  In any event, the high court’s decision should be a boon to the fashion and design industries.

We usually associate copyright with creative literary and artistic works. By contrast, industrial designs are not broadly covered by the copyright statute, primarily because such designs are governed by utilitarian considerations, not by the aesthetic concerns that are the province of copyright law.  Thus, a cheerleader’s uniform, apart from any decorative elements, is considered functional and cannot be copyrighted.

Artistic vs. Utilitarian
Those decorative elements, however, were precisely the focus of the dispute that reached the Supreme Court. In Star Athletica v. Varsity Brands, the court relied on a reading of the copyright statute so straightforward that it’s a wonder other courts hadn’t come up with it themselves.

Justice Thomas wrote that a feature incorporated into 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 graphic work – either on its own or fixed in some other tangible medium of expression, if it were imagined separately from the useful article into which it is incorporated.

These can be called the separability and independent-existence requirements. The first, which the court said is usually easy to satisfy, involves finding elements that have “pictorial, graphic or sculptural” qualities, to quote the statutory language. The independent-existence prong necessitates concluding that the separately identified features can exist apart from the utilitarian aspects of the article in question.

Look at the two images below, which are typical of the five designs that Varsity Brands charged Star

with unlawfully copying.

Applying its two-part test, the court concluded that the arrangements of colors and shapes are (1) separable from the uniforms, and (2) could be imagined in another medium, say, on a painter’s canvas.

The statute requires only that the combination of stripes, chevrons and piping qualify as a non-useful, and therefore copyrightable, graphic work on its own. In short, copyright protection extends to pictorial, graphic, and sculptural works regardless of whether they were created as free-standing art or–as with the cheerleader uniforms–as design features of useful articles. More...

Supreme Court Reduces Risk to Patent Owners Who Are Slow to Bring a Patent Infringement Lawsuit

By Robert Asher. Co-Chair of our Patent Practice Group

Upending long-settled judicial decision-making, the U.S. Supreme Court has struck down the application of laches to patent damages. Under that judge-made doctrine, a patent owner who unreasonably delays in filing suit may be denied a recovery of past damages. As of the March 21 decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, that defense against patent damages has been eliminated.

The availability of a laches defense had imposed on patent owners a sense of urgency when they learned of infringement. Waiting longer than six years to sue would have obligated the patent owner to prove that the delay was not unreasonable and did not prejudice the defendant.

If a court found that patent owner’s delay in filing suit was unreasonable and prejudicial, even a delay shorter than six years could have resulted in a dismissal of a claim for damages. Delay might cause prejudice if evidence favorable to the defendant went missing, or if helpful witnesses suffered faded memories or died, or the defendant made economic decisions that it might not have made if litigation had started earlier.

But given the exorbitant cost of patent litigation, to bring a lawsuit when the infringement was just getting started may not have offered a potential reward large enough to justify the cost. A patent owner might have found itself in a bind – file early and face the financial pressures of going after a smaller reward or delay filing and risk the potential defense of laches.

The Supreme Court’s decision removes timing of the lawsuit as a concern for patent owners. The decision reversed over a century of judicial decisions by giving new emphasis to the matter of timing as set out in the patent statute. That statute provides that damages may be awarded only for infringements taking place not more than six years before suing for patent infringement.

Acting in step with its  decision in the Raging Bull copyright case, Petrella v. Metro-Goldwyn-Mayer, Inc., which limited the laches defense in copyright cases, the Court deferred to the congressional judgment as to the limitations on damages. It ruled that Congress allows a patent owner to pursue up to six years of back damages, and the courts should not cite laches to substitute their own judgment as to the effect timing of a lawsuit should have on damages. More...