Clothing and Costumes Redux

An earlier posting reviewed the availability of protection for the design of clothing and costumes. In the last ten days, two important circuit opinions on point were issued. On July 7, the Fifth Circuit handed down Galiano v. Harrah's Operating Co., and on June 30, the Second Circuit handed down Chosun Int'l, Inc. v. Chrisha Creations, Ltd. In Galiano, the Fifth Circuit affirmed a trial court which had ruled the clothing designs in question were not protectible. In Chosun, the Second Circuit vacated a trial court's FRCP 12(b)(6) ruling that the costume designs weren't protectible. The procedural posture in Chosun was a criticial aspect to the case since the appeals court needed only to disagree (as it did) that "it is beyond peradventure that the plaintiff could prove no set of facts leading to success." In Galiano, the case came to the appellate court on review of a summary judgment grant to defendant on infringement (and therefore was also de novo review).

Chosun was written by Judge Guido Calabresi. He is the author of a number of opinions on the issue, including Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320 (2d Cir. 1996) (He is also the former Dean of the Yale Law School, and for history buffs, he is both a Finzi-Contini and has a yichus that goes back to family in Jerusalem carried off to Rome after the destruction of the Temple.) Galiano was a maiden effort on the topic by Judge Jerry E. Smith (himself a Yale-Yale grad).

In my opinion neither decision approaches the issue correctly, that is, by examining what the real first question is. Galiano mentions the question in a very quick reference, but doesn't analyze it and its failure to appreciate there is a real first question creates analytical deficiencies. Chosun, in footnote 3, realizes there is a predicate issue, but doesn't decide it, and the case should have been decided on basis of that issue.

So what's the first question? This: is the design at issue the design of a useful article? There is only one way to answer that question, by examining the definition of "useful article" in 17 US.C. 101: "A 'useful article' is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. An article that is normally a part of a useful article is considered a “useful article.” If the design is of an article whose instrinsic purpose is merely to portray its appearance, that article is not a useful article.

The instrinsic purpose of costumes is merely to portray their fanciful appearance, and hence they are not useful articles, ever. Accordingly, no separability analysis is required, ever. The Fourth Circuit got this right in Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488, 494 (4th Cir. 1996), but that court is alone in this regard (To its credit, Chosun did cite to Superior Form Builders on this point).

Clothing presents more complicated issues. While I reject the Scottish kilt theory for full-body costumes that "underlay" the Copyright Office's 1991 regulation (56 Fed. Reg. 56530), ordinary clothing does serve an obvious useful purpose. But we must distinguish between two and three-dimensional designs. Two-dimensional designs are not subject to the separability analysis because the design is not the design "of" the useful article, but is instead extrinsic to the useful article; it is merely applied to it. Designs embossed on T-shirts are a good example. (This is entirely different from physical separability: that applies to three-dimensional designs).

Three-dimensional designs of clothing are subject to the separability analysis, but of course may meet it. Most courts come undone because they state the question as whether clothing as a class is protectible or whether clothing can meet the separability standard, as if clothing is what copyright protects. Copyright doesn't protect clothing: it protects original pictorial, graphic, or sculptural elements that function (to a greater of lesser degree) as the design of clothing.

Of course, even after we clear away these conceptual weeds, another problem arises: what is the proper test of separability? Answering that question exceeds the space limitations of any blog. Indeed, any real discussion of Galiano would take up a healthy-sized law review article. In the end, Galiano takes a unique approach for solely garment designs - a "likelihood of marketability" approach - that is unprecedented, extra-statutory, and which has for good reason been rejected by the Second Circuit. At this point, the separability standard is, unfortunately, beyond repair and as bad, is unlikely to ever be fixed.

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A few random notes. On Tuesday, the Second Circuit will hear argument in the bootleg appeal, U.S. v. Martignon. The argument will be at the 40 Foley Square courthouse in Manhattan, about 10:30 am in Courtroom 1505. Wendesday's blog will review the argument.

There are two blogs I recommend. Kevin Heller has one, called "Legislating IP," containing useful, current information on legislative hearings and initiatives. And Gary O'Connor has the Statutory Construction Zone, a wonderful resource for federal statutory interpretation material.