Fashion (Law) Forward: An Interview with Professor Susan Scafidi

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This podcast transcript has been edited for concision and clarity.
Christina Lee

Hello, my name is Christina Lee, and today I am happy to have you on The Issue Spotter Podcast. Today, our Online Associate Jamie Smith will be interviewing Professor Susan Scafidi, and we are super excited to welcome both of them to the podcast. So, thank you so much and looking forward to hearing this.

 

Jamie Smith

Thanks, Christina. And hello, Professor Scafidi, thank you so much for joining me today. I’m so glad we can finally meet each other. For those who don’t know you, I’d like to give a brief introduction before we get into what I’m sure will be a scintillating discussion. Professor Susan Scafidi is the founder and academic director of the Fashion Law Institute at Fordham Law School. As the first professor to offer a course on fashion law, Professor Scafidi is an internationally recognized expert in the field. A frequent commentator on fashion and fashion law, Professor Scafidi has been featured in publications from The New York Times to Women’s Wear Daily and NPR. Professor Scafidi’s advocacy work ranges from support for intellectual property protection for fashion design to enactment of safeguards for underage models. As the author of the book Who Owns Culture? Authenticity and Appropriation in American Law, Professor Scafidi is also recognized for her work on cultural appropriation. A graduate of Duke University and Yale Law School, Professor Scafidi was previously a tenured professor at SMU [Southern Methodist University] and has additionally taught at Yale, Georgetown, and Cardozo. I just wanted to start off with a super broad question and one that I’m sure you probably get fairly often when people hear your job title: what exactly is fashion law?

 

Susan Scafidi

I’m so glad you asked. It didn’t exist when I was in law school. There was health law and banking law and art law and sports law and entertainment law; no fashion law. So, I had to define it. And the elevator pitch version was: every point at which the law touches the life of a garment from the designer’s dream to the consumer’s closet. All right. And that’s poetic. But then when you break it down, [it’s] really four pillars. We start with, following that same pattern, the embodied idea and protection of intellectual property. Then we move on to business and finance, including things like employment and real estate. And then on to international trade and government regulation, including things like taxes and tariffs and trade wars and safety and sustainability. And then, on to consumer culture and civil rights. What we’re permitted to wear to work, to school, on the street, at a polling place and other sorts of issues related to that. So, that whole arc constitutes fashion law.

 

Jamie Smith

That’s very cool. I love that idea of the four pillars. Focusing in on that first pillar, can you talk a little bit more about where clothing broadly, and fashion design more specifically, has historically been situated within intellectual property?

 

Susan Scafidi

Of course. I came to develop this concept through my work as an intellectual property scholar and teacher. And so, the IP part of it is closest to my heart. And, unfortunately, it was a question I asked back when I was in law school: why is it that fashion, under U.S. law anyway, gets so much less protection than, say, books or paintings or, well, this video, for example? And it’s taken me all of this time to develop—to start to develop—an answer. And so, the IP portion of it, under U.S. law, is a conundrum. The U.S. is pretty aggressive when it comes to IP protection globally. In fact, just in the middle of October, one week from when we’re recording right now, the White House issued another statement about copyright infringement—excuse me—about counterfeiting in online platforms, because e-commerce is, of course, on the rise, as it must be in these current times. So, it’s unusual that there should be an area of intellectual property in which the U.S. lags behind the rest of the world. And now, Jamie, as you know, IP historically is a wind that blows from Europe, right from the Statute of Anne for copyright in England and in trademark and patent to an extent. Trademarks [have existed] certainly back to maybe ancient Rome or before— every time an artisan signs their work, right, that’s a proto-trademark and the symbols that went with that. And so, it comes to us from Europe. But, while Europe protects fashion designs, the U.S. does not. But, many other countries have followed Europe—Japan protects designs and India and to some extent Israel and a little bit in Canada and a tiny bit in Australia and so, lots of other places do protect fashion and we just haven’t gotten there yet.

 

Jamie Smith

For our listeners who don’t know, the fashion world was rocked a few years ago in the Supreme Court’s decision in Star Athletica v. Varsity Brands. As I know, you were involved in the case from, really my understanding is, its inception. Can you tell me a little bit about that case and where fashion design copyright stands right now?

 

Susan Scafidi

Absolutely. So, when it comes to the major headers of intellectual property—copyright, patent, trademark—trademark is the one that’s usually the most helpful, because if we can’t protect the garment, at least we can protect the label or the logo. Patent is somewhat helpful to us from time to time. And we can certainly talk about that, if you’d like. And then there’s copyright. Well, the Copyright Office for over a hundred years has said that garments are useful articles and, no matter how creative or fanciful, they are not subject to copyright. However, there is a little loophole there and that is anything that is a separable aspect of the garment that could be imagined separately, and, if imagined separately, either in the same medium—fabric—or in another medium, the copyrightable work can therefore be subject to copyright. So, in short, these separable elements of a garment are subject to copyright. And in the case of Star Athletica v. Varsity, as it came to be known, the company Varsity had copyrighted a series of designs for cheerleaders, to be placed on cheerleader uniforms. And their rivals, Star Athletica, allegedly copied those designs. I would say they straight-up copied those designs. They’re pretty exact, no questions there. And so, when I got the call about it, it was to serve as an expert at the level of the district court case. And honestly, Jamie, I thought it was a prank. I thought, “Cheerleader uniforms, really? You’re kidding, right?” And it was a friend of a friend calling, which is the other reason I thought it was a prank. But, when they explained to me what the issue was, that there were five registered copyrights and there were these alleged infringements and that the defendant, as defendants do, was challenging the validity of those registrations, I said, “Okay, fine, I’m in, go team!” Right. I can do this cheerleader thing, which meant that immediately my living room was full of cheerleader outfits. And I spent a lot of time looking at stripes and color blocking, because really the issue was this: what had been registered had been—had these same designs been registered in the form of a rectangle, a piece of paper with this design running edge to edge—there would have been no case. However, the designs, the color blocking and the stripes were rendered on lightly-sketched images of girls or women wearing those designs. So, edge-to-edge of a garment as opposed to edge-to-edge of a piece of paper as we looked at these two-dimensional designs. And so, what the defendant said was, “You are trying to copyright a garment.” What plaintiff said, and what I said was, “Oh, no, no, these are copyrights of designs that appear on garments and are separable from garments.” And unfortunately, I can’t share with you my entire expert report because it was filed under seal as were many documents in that case to protect the parties’ business interests, which is quite common. But, I can explain it to you in three photographs. Imagine, if you will, back to maybe an art history class you would have taken at some point and Mondrian and all of the different color blocked paintings that Mondrian did in the 1920s. Then, fast forward to fashion history in the 1960s. Yves Saint Laurent created a color blocked dress in white and black and yellow and blue and red, so primary colors plus black and white, that was an homage to the Mondrian paintings and he called it his Mondrian dress. If you look at those two things, the painting or the series of paintings and the dress, it’s inconceivable to me that one should be subject to copyright and the others should not be. And, in fact, the third picture that I happened to find was a photograph of, from the 1980s, of a little Australian cheerleading team in, you guessed it, Mondrian-inspired cheerleader outfits. And so, looking at this together, it just made sense to me that both of these things should be subject to copyright. If you cut out part of the cheerleader uniform and mounted it on a canvas, you’ve got a Mondrian. And so that was the argument that I made. And the Sixth Circuit actually used that same analogy, to painting and to Mondrian, which was gratifying. And then it went up to the Supreme Court, at which point the Fashion Law Institute filed an amicus brief. The reason it went up to the Supreme Court is that, I used the term just now: separability. I said that if you have a design that is separable from the underlying functional or useful article, then that work that is separable can be copyrighted. But, that’s what the Copyright Act says. Some of the legislative history had made a distinction between physical separability and conceptual separability. And the concept of conceptual severability—not just breaking off a part of it as in Mazer v. Stein, when you could take the dancer out of the lamp base, right, the little statuette could be physically separated, in that very famous case from 1954 from the Supreme Court—but a conceptual separation was a little harder for various courts to verbally wrap their minds around. And so, the Sixth Circuit listed some nine different ways of describing conceptual separability—so, nine different potential tests—and then created a hybrid version of its own, so a tenth. Which really set it up for: please, Supreme Court, will you resolve this for us? And the Supreme Court did exactly what we kind of asked it to in our amicus, and that is [that it] scratched away all of these descriptions and went back to the language of the Copyright Act to describe this essentially two-step test: can you imagine it separately? And if you can, is it a copyrightable work? So again, go team.

 

Jamie Smith

Now, do you know of any litigation that happens to [have] been built off the Star Athletica decision or might be working its way through the courts now? Like, what can you tell us? Any inside baseball?

 

Susan Scafidi

Well, I can tell you what has happened since, and that is: Happy Halloween. One of the first cases that followed Star Athletica and referred back to it involved Halloween costumes. And there is a line of cases that has, that for years now that has been fought over, can you copyright a Halloween costume? Because although Halloween for us is all fun and games, it seems that for costume manufacturers there is a lot of intense rivalry and a fair amount of copying. The case that was the first to interpret Star Athletica v. Varsity was Silvertop Associates v. Kangaroo Manufacturing. And it involved, of all things, a banana costume. And it turns out that, yep, there’s more than one way to peel a banana. So, Silvertop Associates accused Kangaroo of copying its banana Halloween costume. And you can imagine sort of a full body costume like this. And, of course, the defendant responded that it’s a banana. That there are, that due to idea-expression dichotomy, due to the fact that it was copied, that you could copy a banana from nature, there really was no protectable copyright here. But, in fact, it turns out that there are dozens of different banana costumes out there and plaintiffs probably found them all and demonstrated to the court, to the court’s satisfaction that there are indeed many ways to design a banana costume. And, the Third Circuit, again, referencing Star Athletica v. Varsity, last year, agreed and said, yes, there is, in fact, protectable copyright in the banana. And in fact, when you and I think about this, if we can go back to art history class for a minute: Andy Warhol did banana prints. Bananas are fun. And we can imagine bananas being part of different kinds of artistic creations. So that, I think, would be the main one.

There’s another way that Star Athletica has affected legal practice in the copyright area, particularly for fashion, and that is the responses of the Copyright Office. So, probably most prominently, Kanye got involved. So, it took a couple of years to be able to register a design for the Yeezy Boost 350’s, a couple of different specific colorways, not unlike the case of Varsity putting a color blocked designs on cheerleader uniforms. In the case of the sneakers, they were different designs, more like brush strokes than color blocks, but on sneakers. And the Copyright Office, after pondering this and thinking about Star Athletica did indeed go ahead and register those designs. So, we do have a long tail, right, that is affecting fashion and copyright in this regard. And it doesn’t seem to matter, which was part of the argument back in Star Athletica, whether we’re dealing with surface designs that are that are applied after a garment is created—so printing on a white t-shirt or a white cheerleader top, for example, or putting brushstrokes across a sneaker, or whether we are dealing with color blocking that is created by sewing together blocks of different colored fabric and braid, right, either one creates a design that can be imagined separately, even though one also at the same time creates the structure of a garment or an accessory and the other does not. It’s just all about that imagination.

 

Jamie Smith

It truly is. If you don’t mind, Professor, switching gears a little bit. One thing that I’m especially concerned about as someone that is oriented towards law and public policy is the way in which both today we see fast fashion brands and luxury fashion houses alike ripping off younger or smaller designers. In your work with the Institute, do you have any anecdotes about this happening?

 

Susan Scafidi

You know, that concern for me actually predates even the Institute and we’re celebrating ten years this year. So, it’s been part of my life for a long time. And, in fact, one of the things that we do is we have a clinic that is specifically for fashion law. And a lot of the people who come to us are, in fact, designers, although it’s open to all sorts of different fashion professionals, models, you name it. But the clinic kicked off in part because I got so angry when a friend of a friend, a designer, came to me and said, you know, I’m making these handbags and I am taking them to trade shows and we’re doing well and we’re getting orders, but then our orders are being canceled. Or, I’m seeing online people saying, “I thought about buying this handbag, but then I found it cheaper elsewhere,” although it wasn’t the same bag, it was the knockoff of the bag. And so, this young designer had gone to an attorney who had said, “Oh, well, you know, I’ve handled a few jewelry cases, I can help with your handbags,” charged her tens of thousands of dollars. It’s to the point where the designer was really hurting financially, and I looked at it and in thirty seconds said, “Well, those are two entirely different things.” Jewelry is subject to copyright, whereas handbags are functional and are largely not unless, again, you have some kind of surface design or some kind of decorative element, maybe a sculptural clasp or something like that. And I was so disturbed about the attorney who either deliberately and willfully or just negligently way overcharged this woman for thirty seconds worth of advice, took her money, but wasn’t able to help her, that we realized we had to have a more systematic way of helping emerging designers in this way. And then, of course, that broadened out to others. So, you know, people came to me and designers sent their friends and I called attorney friends and we put people together. And so, there is an active community trying to assist young designers in this regard and then, of course, there’s social media.

 

Jamie Smith

Yeah, so given the rise of Instagram accounts like @dietprada, a popular account that calls out fashion copying throughout the industry, what are your thoughts on call-out culture or litigating this issue in the court of public opinion?

 

Susan Scafidi

Well, social media or the court of public opinion is a two-edged sword. The Internet giveth and the Internet taketh away. The Internet makes it a much bigger problem in terms of copying, because copyists can see everything all at once. They can see runway shows, they can see emerging designers’ work immediately. There’s no delay. And, when it comes to actually trying the case in the press, they’re trying the case on social media, sometimes social media does not agree with the call-out. So, with that caveat, however, I think social media is incredibly useful. And I actually do know Tony and Lindsey, the duo behind Diet Prada, and, as I’ve discussed with them, to me there’s a through line from traditional media going back to the 1920s, 30s, 40s, calling out copying to some of the work that I did. I created a blog, actually, and that was how fashion law sort of first came to be a much longer story. But, at another institution at another time, my senior colleagues wouldn’t let me write about these things, and so when I wrote about other things, like fashion, I thought, you know what, I’m not waiting for these academics. I’m starting a blog, and blogging was cool at the time. So, a through line from there to then other blogs arose in different ways, picked up these issues, started writing about fashion and law, sometimes together. Or, simply in terms of online publications, there were things like Fashionista creating what it called “Adventures in Copyright” and doing the same kind of side-by-side post. And now, Diet Prada has picked up the flag and is running forward. I don’t always necessarily agree with everything that they call out, but I do think that they are performing a useful public service in holding the fashion industry’s feet to the fire and trying to keep us honest. Because I think that they started their Instagram account and they come from a place of wanting the fashion industry to always be more creative and do better. And so, calling out those doing that copying and doing those comparisons means that designers may be a little more careful. No one really wants to be called out for cheating on their homework, essentially, and not doing their own design work, whether it is a fast fashion company copying a small designer or a very established brand copying a small designer.

One of my favorite examples of call-out culture having changed the outcome of production is in the case of Iris Apfel and the Home Shopping Network. Well, Iris Apfel is a delightful woman and there is actually a feature film about her called Iris, but she is over 90 years old and a fashion icon, also something of a magpie. She collects everything. I see you nodding, you know Iris. So, Iris did this collab with the Home Shopping Network and they were going to create jewelry together. So far, so good. However, one of the pieces when the Home Shopping Network was announcing that this was going to be happening was a brooch in the shape of a bird. Of a toucan head, actually. And turns out that it was very, very similar to a brooch that Iris already owned, created by the French design duo Hanna Bernhard. And when the duo behind Hanna Bernhard saw this advertisement by the Home Shopping Network, they said, “Wait a minute, that’s our pin. That’s our brooch,” and they started messaging everybody, me included, and saying, “Hey, you know, can you let people know this is actually ours?” and once that hit social media, the Home Shopping Network almost immediately made an announcement and they said, “Oops, we’re sorry. We thought it was vintage. We’re not producing that piece.” Now, I don’t know whether they really thought it was vintage. That’s entirely possible. If you’ve seen the movie Iris, you know that there’s a lot to choose from in her life and in her home. But I’m fairly certain that counsel was involved and was well aware that jewelry is, in fact, subject to copyright, even though much fashion is not. And so, [counsel] decided that it really wasn’t worth what was certainly going to be a losing battle if it were to go to court. So, with no expense other than the time it takes to hit a few keystrokes, the matter was resolved. And so, I really like that kind of outcome, and so my hope is that ultimately we’ll go beyond jewelry to have copyright for clothing more generally or some kind of design protection for clothing more generally; a shorter term, in more limited ways. As you know, I spend a lot of time trying to make legislation in that regard happen. It hasn’t yet, but we could get there. And, if we did, I wouldn’t expect to see lots and lots of litigation. We don’t see lots and lots of litigation around jewelry, but I would expect to see a lot more quiet resolutions of this kind of copying and these inequities in the system.

 

Jamie Smith

Well, thank you so much for taking the time to speak with me today, Professor. It’s really been a pleasure.

 

Susan Scafidi

Jamie, it’s been my pleasure as well. But there’s something that you haven’t told me, and that is, where do you stand on all of this and how did you come by your interest in fashion?

 

Jamie Smith

Well, we just covered Star Athletica in my IP class. I’m taking the class with Cornell’s own Professor Liivak this semester.

 

Susan Scafidi

Oh, my former student.

 

Jamie Smith

Oh, is he?

 

Susan Scafidi

Yes. I taught for a couple of semesters at Yale and he was in my class.

 

Jamie Smith

Oh, wow. And it wasn’t the thing that piqued my interest, but was definitely something that crystallized my interest. I’m just a fan of fashion in general. I’ve seen the Iris documentary, of course, and have read Grace Coddington’s biography. And I’m a subscriber of Vogue for probably over a decade at this point. So, it’s more of just a personal interest for me. And when I came to IP, I was certainly most interested in copyright as a scholar of art history. So, it was shocking to me that fashion design in and of itself wasn’t copyrightable, because to me fashion is art. Without question, I think you could hang just about any item of clothing on a museum wall and call it art. And indeed, in certain modern art museums it has been done. I’ve been to the Tate and it felt like there were rooms upon rooms of piles of clothing.

 

Susan Scafidi

And those are very well-attended exhibits, by the way.

 

Jamie Smith

Truly. And, I will say in my 1L Lawyering class, which is our legal reading, writing, and research class here at Cornell, we had a memo that we had to write wherein—it’s kind of a crazy problem— basically, the fact pattern is that a designer, Natasha Briggs, designs raincoats under the brand Storm Queen and Natasha decided to do a conceptual art project where she made a one-time jacket with Stormy Daniels’ face on the back. I believe it was something like “weather the storm” or “stay dry with Storm Queen.” And we had to argue whether this was protectable speech. So, it’s a little bit of a different bent on it because there were also, you know, hypothetical photographs to go with the jacket and things like that. But that was really, last year, what got my interest going in, you know, where fashion and the law intersected. So ideally, I’ll be able to do a bit of a mini-series for The Issue Spotter Podcast on the state of fashion law going forward.

 

Susan Scafidi

That sounds like a great first-year project, actually, and kind of realistic, right? And we’ve had lots of different, we have [had] to argue Rihanna v. Topshop, for example, about very similar things, other things that were not quite such hot news. And, so perhaps didn’t have the same kind of arguments that you all certainly made about expressive content. But dare I ask where Professor Liivak stands on Star Athletica v. Varsity, or did he show his cards?

 

Jamie Smith

He keeps it pretty close to the vest. I will say, I love his takes on media. They’re pretty entertaining. I’m very sad we ended our copyright section today, so I will miss his take on Koons and other artists of our time, for sure.

 

Susan Scafidi

Of course. Well, we should have had more talk about art history. Here I am chatting with you about Mondrian and Warhol, and you’re just smiling and nodding.

 

Jamie Smith

I’ll have to have you back on the podcast.

 

Susan Scafidi

Delightful. Delightful.

 

Jamie Smith

Thank you so much, again, Professor Scafidi, for joining me today. And thank you all for listening to The Issue Spotter Podcast. Tune in next time for another fascinating take on an issue at the intersection of law and public policy.

 

JSmithHeadshotAbout the Author: Jamie Smith is a 2L at Cornell Law School. Originally from Massachusetts, Jamie graduated Magna Cum Laude with a degree in Communication from the University of New Hampshire. Jamie is an Online Associate for the Journal of Law and Public Policy and a student in the First Amendment Clinic. Jamie is looking to practice with a nonprofit doing media law upon graduation. When not in school, Jamie enjoys knitting, baking, and watching Bravo.

Suggested Citation: Jamie Smith, Fashion (Law) Forward: An Interview with Professor Susan Scafidi, Cornell J.L. & Pub. Pol’y: The Issue Spotter (Nov. 23, 2020), http://jlpp.org/blogzine/fashion-law-forward-an-interview-with-professor-susan-scafidi/.

 

 


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