Maja Kozlowska
Paula Hian, an indie fashion designer, saw her copyright infringement claim against Louis Vuitton proceed past the motion-to-dismiss stage.[1] Hian alleged that Louis Vuitton copied her black-and-white checkerboard pattern, Plaque D'egout. Historically, infringement claims based on alleged copying of garment designs have been difficult to assert because of the utilitarian nature of clothing and the corresponding lack of copyright protection. SCOTUS’s decision in Star Athletica, LLC v. Varsity Brands, Inc. made success on design infringement claims much more plausible.[2] Nonetheless, even after Star Athletica, Hian’s suit is unlikely to succeed.
The Law Before Star Athletica
You might be surprised to learn that fashion designers have a hard time obtaining copyright protection for their designs. After all, fashion design is an art form, and the core purpose of copyright law is to promote the arts. Under the Copyright Act, however, the functionality of a work limits its protection.[3] The exclusion of “useful articles” from copyright protection has strong policy justifications. For one, the design or shape of many objects, like scissors or paper clips, is mandated by function and consumer expectations. Thus, it would also be undesirable from the perspective of the consumer if copyright law granted a single manufacturer a monopoly on a particularly clever or effective design.
It is easy to argue that clothes are “useful articles” because, no matter how attractive or trendy, their design is ultimately tied to a utilitarian function, that is, covering the body. In fact, prior to Star Athletica, courts denied copyright protection to costumes, which, one would think, serve less of the strictly utilitarian purpose of providing warmth and coverage.[4] The unfortunate result is that the “useful article” doctrine makes it easy for big brands to rip off independent designers.
The “useful article” doctrine reimagined in Star Athletica
In Star Athletica, the majority of the Supreme Court took to heart the lack of protection copyright law afforded to fashion designers. The court held that the “useful article” doctrine did not pose an obstacle to the copyrightability of cheerleading uniforms designed by Star Athletica. Furthermore, the court clarified that under the separability doctrine, a design could be copyrightable to the extent the design could be pictured (or imagined) on something other than the garment.[5] Applying these rules to the facts of the case, the court found that Star Athletica’s design which consisted of colorful chevrons, lines, curves, and stripes was copyrightable subject matter.[6]
What does Star Athletica mean for Paula Hian?
Hian can argue persuasively that her black-and-white checkerboard pattern is akin to the chevron designs on the cheerleading uniforms. However, she will face other obstacles. Louis Vuitton will likely argue that the black-and-white checkerboard pattern has been done so many times before that, for all intents and purposes, it is in the public domain and not subject to copyright protection. To the extent Hian’s design departs from a classic checkerboard design, Hian will have trouble showing that Louis Vuitton copied her design and not the public domain version.
Overall, fashion designers can celebrate the outcome in Star Athletica. Hian’s situation, however, illustrates that some designers will likely face other issues in their lawsuits against brands who allegedly copied their designs.
[1] Hian v. Louis Vuitton USA Inc., No. 22-3742, 2024 U.S. Dist. LEXIS 114123 (E.D. Pa. June 28, 2024).
[2] Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. 405 (2017).
[3] See 17 U.S.C. § 113 (2012) (excluding copyright protection for articles that have an intrinsic use beyond displaying the appearance of the item or conveying information).
[4] See, e.g., Whimsicality v. Rubie’s Costume Co., 891 F.2d 452 (1989); Whimsicality, Inc. v. Battat, 27 F. Supp. 2d 456 (1998).
[5] Star Athletica, 580 U.S. at 489 (2017).
[6] Id. at 492.