Apparel designer files suit for infringement of copyrighted camouflage design. ASAT v. CHAPTER 4

A copyright is a set of exclusive rights granted to the creator of an original work of art when the art is fixed in a tangible form. Registering the work with the United States Copyright Office will strengthen the exclusive rights granted by copyright law, but is not necessary for a copyright to be granted. The creator of an original work of art is granted the exclusive right to copy distribute and sell the copyrighted work, among other things. If someone other than the copyright owner exercises one of the exclusive rights granted by copyright law, that is considered copyright infringement. A copyright owner can sue to stop copyright infringement with an injunction and to get monetary damages for infringement which has occurred.

Useful articles are excluded from copyright protection by United States Copyright Law to the degree that ornamental features can be distinguished from functional features. If the ornamental features of a useful article can be separated from the functional features of a useful article than the ornamental features can be copyrighted. For several decades there was disagreement between the different Federal Circuit Courts with respect to how the useful article standard applied to apparel. The United States Supreme Court resolved the disagreement when it issued its opinion in STAR ATHLETICA, L.L.C. v. VARSITY BRANDS, INC., No. 15–866 (U.S. 2017). In that case the Plaintiff designed cheerleader uniforms and the Defendant copied the designs. The Plaintiff sued for copyright infringement. The Defendant claimed that clothing is a useful article and therefore copyright protection is not available.

The United States Supreme Court held that a feature incorporated into the design of a useful article is eligible for copyright protection only 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 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.

ASAT OUTDOORS, LLC v. CHAPTER 4 Corp., 19-cv-10462 (S.D.NY 2019) is a case which revisits the issue decided in STAR ATHLETICA. The plaintiff in this case created a camouflage pattern in 1985. The plaintiff registered the design with the United States Copyright Office and was given registration number VA 209-141. A copy of the copyrighted pattern is reproduced above on the left.

The defendant recently began selling clothing which features a camouflage pattern. An example of one of the defendant’s products is reproduced above on the right. The plaintiff feels that the defendant’s pattern is so similar to the plaintiff’s pattern that it constitutes copyright infringement. In its complaint the plaintiff requests statutory damages of $150,000 per infringement. What exactly constitutes an infringement is unclear in the complaint. Whether an infringement is each article of clothing produced by the defendant or each time an image of the infringing pattern has been displayed on the defendant’s website is left open to interpretation.

Given the strong similarity between the plaintiff’s pattern and the pattern on the defendant’s clothing, as well as the precedent set by STAR ATHLETICA, the plaintiff has a strong case. It will be interesting to see what defenses the defendant asserts in its answer.

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