Canadian Law / Copyright / Fashion & Business / IP / legal / US and Canada / US Fashion / US Law

Give me a Yay! The Varsity Brands decision

It is the talk of the town. On March 22 the US Supreme Court decided the Star Athletica LLC v. Varsity Brands Inc. case that dealt with the copyrightability of designs on articles of clothing.

Cheerleading uniforms were at issue in this case. The question before the courts was whether the design on the cheerleading uniform was protected by law. The US District Court for the Western District of Tennessee had entered summary judgment in favour of Star Athletica, holding that the designs were NOT entitled to copyright protection because they did not meet the separability requirement that the design be separated from the utilitarian function of the garment. The US Court of Appeals reversed this decision and the US Supreme Court has now affirmed the Court of Appeals decision.

In making this decision, the Supreme Court relied on the text of the Copyright Act which includes that “a pictorial, graphic, or sculptural feature incorporated into the design of a useful article is eligible for copyright protection if it (1) can be identified separately from and (2) is capable of existing independently of, the utilitarian aspects of the article” 17 U.S.C. s101. The Court decided that copyright law can sometimes protect the aesthetic elements of designs for cheerleader uniforms.

This decision does not protect all designers from knockoffs and copying, but it does allow for certain parts of a design to be protected. This is a significant change from the prior level of protection available to designs. This decision has the potential for significant impact. Luxury houses may have a tool to defend themselves against fast fashion runway knock-offs. That being said, there are possible negative consequences as well. Brands may become reluctant and apprehensive from drawing inspiration from peers or the past. However, it seems certain that this case will become central to brands fighting to protect their designs.

So, in reading this decision, I stopped to wonder what Canada’s position was on separable designs. Here is the scoop:

  • In Canada, designers of mass-produced clothing do not receive full protection under the Copyright Act. Why? Under s64, it states that once a useful article has been legally reproduced more than 50 times, then it will not be copyright infringement if further copies are made of that article
  • s64(3) “protects an artistic work used as a trademark or for material that has a woven knitted pattern that is suitable for piece goods or the making of wearing apparel”
  • Under trademarks, if the features of the clothing can be proven as a distinguishing guise, then protection may apply as long as the designer shows that the features are not purely functional/utilitarian
  • Industrial Design Act grants the owner of a design the monopoly over that design for up to 10 years. It is worth noting that in order to achieve this protection you MUST register the design with CIPO and the application must be filed within one year of the design becoming public
  • the Industrial Design Act will only protect ornamental and non-utilitarian features of the garment
  • Note that if the design available in the marketplace is different from the design registered, the protection will cease to exist

Although the Canadian laws provide some form of design protection through creatively navigating intellectual property laws available, perhaps the recent Supreme Court of the United States decision will persuade Canadian designers to ask for greater protection or more cohesiveness in protecting their designs.




Photo courtesy of