It has been nearly three years since the decision in Star Athletica, LLC v Varsity Brands, Inc., et al, No. 15-866, where the Supreme Court of the United States re-evaluated when a feature incorporated into the design of a useful article is eligible for copyright protection. There, the Supreme Court found that that the lines and chevrons on the Varsity Brands cheerleading uniforms were copyrightable. However, since Star Atheltica, the debate surrounding the copyrightability of fashion designs has created significant conversation across various jurisdictions. As designers seek greater protection of their creative works, there continues to exist an interesting and complex dynamic between granting protection and ensuring that essential elements and designs remain part of the public domain.

The law in the US in light of Star Athletica

As per §101 of Copyright Act of 1976, features of the design of a useful article may be eligible for copyright protection if those features “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” In Star Athletica, the Supreme Court reassessed this doctrinal concept of separability, determining that the feature must be capable of being perceived as a “two or three-dimensional work of art separate from the useful article,” and qualify as a “protectable pictorial, graphic, or sculptural 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.”

The law in Canada

Canadian copyright law does not implement a separability test similar to that of the US. Rather, section 64 and 64.1 of the Copyright Act work together to build a legislative regime for the copyrightability of design elements on useful articles. Specifically, section 64(2) establishes that copyright subsists in a design applied to a useful article only if the article is reproduced less than fifty times. Though there are certain exceptions to this limitation, it has proven to be difficult for Canadian designers to claim copyright of their fashion designs.

If the same fact pattern as that of Star Athletica arose in a Canadian context, it is likely that given the “less than fifty” rule established in section 64(2), the design elements on the cheerleading uniforms may not have been eligible for copyright protection.

The issue of how to protect remains

Not long after the decision in Star Athletica, many fashion designers and brands began to argue for stronger copyright protection of their fashion designs, most without success. Unsurprisingly, this issue is not exclusive to global fashion brands – vulnerability to counterfeiting is an issue that presents itself even amongst the Canadian fashion and entrepreneurial landscape. When multi-national corporations copy and subsequently commercialize independently-made designs, independent artists find that fighting back is rarely an easy battle to win. Moreover, the increasingly digitalized nature in which entrepreneurs now conduct business and share their work has created an added layer of complexity with respect to the way that art "theft" is addressed within the realm of copyright law.

As the copyright protection of fashion designs continues to be a debated topic in both the legal and fashion industries, one thing remains certain – it is more than just a trend.

About the author

Alessia Monastero is currently an articling student at Deeth Williams Wall LLP.

A version of this article originally appeared on the OBA’s Information Technology and Intellectual Property Law Section’s articles page.