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NOTES

Down the Rabbit Hole: How the Lack of


Protection for Fashion Designs Creates a
Free-for-All both in the Courtroom and in
the Fashion Industry

Somto Ojukwu*

INTRODUCTION

C
opyright protections extend to original works of authorship and
protect against unauthorized copying. 1 This system of
copyrights provides the incentive for increased creativity in the
arts. 2 Authors and creators know their works are protected and
so are encouraged to create more, thus enriching society’s collection of
creative, inspirational, and innovative works. 3 It is from this collection that
society builds, creating an even richer public domain. 4 Without these
protections, authors would be subject to rampant copying without
receiving compensation for their intellectual property. 5 The fashion

* Juris Doctor, New England Law | Boston (2017). B.A., Graduated with Honors, Business
Management, University of California, Merced (2010). I would like to thank my family for the
endless amount of support, love and encouragement they have given me. I would also like to
express my gratitude for the Editors and Associates of the New England Law Review for their
work and dedication in preparing this Note for publication.
1 Copyright Basics, Circular 1, U.S. COPYRIGHT OFFICE 1, (2012), https://perma.cc/JH8U-FD7E.

2 Chris Dodd, Copyright: Empowering Innovation and Creativity, HUFFINGTON POST (June 10,

2013, 4:50 PM), https://perma.cc/QV5J-FKY9.


3 See generally id.
4 See Definitions, U.S. COPYRIGHT OFFICE, https://perma.cc/DJ4R-HZ8U (last visited May 25,
2017) (defining public domain as a category of works no longer under copyright protection
from which the public may freely use without permission).
5 See Fred Anthony Rowley, Jr., Dynamic Copyright Law: Its Problems and a Possible Solution,

11 HARV. J.L. & TECH. 481, 482 (1998) (explaining, with an example, that authors would be

609
610 New England Law Review [Vol. 51|3

industry—a $1.2 trillion global industry—is one such collection that does
not receive copyright protection. 6 It is constantly subject to rampant
copying. 7
Clothing receives no copyright protection because it is considered a
useful article. 8 Courts do not want to remove or limit society’s ability to use
something that provides a useful function, at least not through copyright
protection. 9 However, courts have struggled for years with whether
particular aspects of clothing designs may be protected, and have yet to
settle on a proper manner of determination. 10 The decision in Varsity
Brands, Inc. v. Star Athletica, LLC is one of many which provides direction
for fashion designers on how they can alter their designs in order to
acquire copyright protection. 11 In Varsity, the Sixth Circuit Court of
Appeals applied its own test to determine that the stripes and zigzag
designs on a cheerleader uniform were copyrightable separate from the
uniform as a whole. 12 But the varying tests that courts apply in
determining whether a design has particular elements which are eligible
for copyright protection makes it difficult for designers to predict what
part of their designs will be protected. 13
This Note argues that although the fashion industry has been subject to
multiple tests developed for determining whether the artistic elements of
clothing are separate from its functional aspects, the best is the “separate
artistic work” test created by the Copyright Office because it is faithful to
the purpose of the Copyright Act—which is to promote creative works.
This Note argues that the plethora of tests developed have served only to

deterred from creating if there were no protections for their works).


6 Joint Economic Committee Democratic Staff, The Economic Impact of the Fashion Industry,

U.S. CONGRESS (Feb. 6, 2015), https://perma.cc/F2MZ-7JHY (discussing the amount of people


employed by the fashion industry each year and other economic impacts).
7 Protection for Fashion Design: Hearing on H.R. 5055 Before the Subcomm. on Courts, the

Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. (2006) (statement
of the United States Copyright Office).
8 17 U.S.C. § 101 (2010) (defining a useful article as one that provides a utilitarian function,

and stating that they are ineligible for copyright protection).


9 See Dennis S. Karjala, Copyright and Creativity, 15 UCLA ENT. L. REV. 169, 180 (2008) (“[I]f
a work is a useful article under this definition it should be relegated to patent . . .
protection.”).
10 See Lisa J. Hedrick, Tearing Fashion Design Protection Apart at the Seams, 65 WASH. & LEE

L. REV. 215, 230 (2008) (discussing the lack of clarity in copyright protection for fashion
designs).
11 Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 481–83 (6th Cir. 2015).
12 Id. at 492.
13 See Darren Hudson Hick, Conceptual Problems of Conceptual Separability and the Non-

Usefulness of the Useful Articles Distinction, 57 J. COPYRIGHT SOC'Y U.S.A. 37, 41–49 (2010)
(discussing the multiple tests for determining separable elements).
2017] Down the Rabbit Hole 611

further confuse and complicate the matter leaving designers essentially


unprotected from unauthorized copying. It will argue that the Copyright
Office is the leading agency concerning what can be copyrighted; therefore
it should be given high deference in determining the correct and
appropriate test to apply to functional articles in order to determine
whether their aesthetic aspects are separable from their utilitarian aspects.
Part I provides background on the relationship between copyrights,
clothing, and the fashion industry. Part II will outline the various tests for
determining copyright eligibility of artistic elements within a useful object,
as well as introduce the Copyright Office approach to eligibility. Part III
details the weaknesses of each test and their inability to reliably anticipate
copyrightable works. Part IV argues the Copyright Office approach is the
best solution to the separability analysis because it furthers the purpose of
the Copyright Act by ensuring that the aesthetic elements are
copyrightable separate from the functional article in which they lie. Finally,
Part V will apply the Copyright Office approach to various designs
including the cheerleader uniforms from Varsity in order to reveal its
ability to consistently predict copyright eligibility.

I. Background

A. Copyrights in the Fashion Industry: Why Clothing Designs Are Not


Protected

The fashion industry is a highly lucrative market that influences every


corner of society. 14 Designers are constantly changing, evolving, and
transforming in order to create new styles and trends for their ever-
changing and fickle consumers. 15 However, unlike fashion’s counterparts
in the creative arts, fashion is not subject to strong copyright protection
under the Copyright Act of 1976. 16 The Copyright Act was enacted to
“promote the progress of science and useful arts,” to encourage the
creation of art, and to reward artists for their innovations by protecting
against copying. 17 A copyright gives the creator of an original work
exclusive rights to produce and distribute the work. 18 However, fashion
designers are not afforded such copyright protections in their creative

14 See Spotlight on Statistics, BUREAU OF LAB. STATS. (June 2012), https://perma.cc/8ZYG-

8UX7.
15 See id.
16 Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual
Property in Fashion Design, 92 VA. L. REV. 1687, 1689 (2006) (explaining that the fashion
industry remains “outside the domain of IP law”).
17 U.S. CONST. art. I, § 8, cl. 8; 17 U.S.C. § 106 (2010) (detailing the exclusive rights given to

copyright owners).
18 17 U.S.C. § 106 (2010).
612 New England Law Review [Vol. 51|3

designs. 19 This is because clothing is summarily categorized as a “useful


article.” 20
A “useful article” is defined by the Copyright Act as “an article having
an intrinsic utilitarian function that is not merely to portray the appearance
of the article or to convey information.” 21 Furniture, silverware, and the
shape of a truck are all examples of useful articles which have intrinsic
utilitarian function. 22 Clothing’s function is to cover the body, keeping the
wearer warm and protected from the elements. 23 Thus, clothing is not
subject to copyright protection, and fashion designers are free to copy the
designs of their competitors. 24 This creates a problem for designers who
debut their designs during a runway show only to have their competitors
quickly copy, manufacture, and distribute them to the market. 25

B. How the Lack of Copyright Protection Affects the Industry

The “knockoff” market in fashion has played an important role in the


growth of the fashion business. 26 Designers continually create new designs
which are quickly copied and remade into knockoff versions for lower-
price-range consumers. 27 This enables designers to capitalize on the new
trends and immediately distribute them to consumers at all price ranges. 28
Because of the struggle designers have with protecting their designs, many

19 Raustiala & Sprigman, supra note 16, at 1691.


20 Anne Theodore Briggs, Hung Out to Dry: Clothing Design Protection Pitfalls in United
States Law, 24 HASTINGS COMM. & ENT L.J. 169, 183 (2002) (“Clothing is clearly a ‘useful
article,’. . . [it] is much more than decoration for the body.”).
21 17 U.S.C. § 101 (2010).
22 Daniel A. Tysver, Works Unprotected by Copyright Law, BITLAW, https://perma.cc/7U2T-
6TXF (last visited May 25, 2016); Useful Articles, COPYRIGHT.GOV, http://perma.cc/HZX6-5XSC
(last visited July 11, 2016).
23 Briggs, supra note 20.

24 See Raustiala & Sprigman, supra note 16, at 1696 (describing the rampant copying of

Paris runway shows and the precautions designers would take to prevent copying).
25 C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61 STAN. L.

REV. 1147, 1171 (2009) (“Electronic communications and express shipping ensure that
prototypes and finished articles can be brought to market quickly. As a result, thousands of
inexpensive copies of a new design can be produced, from start to finish, in six weeks or
less.”).
26 Why Knockoffs Are Good For The Fashion Industry, NPR (Sept. 10, 2012, 3:28 AM),

https://perma.cc/79KH-STYE (“[Y]ou can think of copying as a turbocharger that spins the


fashion cycle faster, . . . things come into fashion faster, they go out of fashion faster, and that
makes fashion designers want to come up with something new because we want something
new.”).
27 Hemphill & Suk, supra note 25, at 1172 (describing the process of selling the copies at a

discounted price and avoiding the costs associated with design).


28 Hemphill & Suk, supra note 25, at 1172.
2017] Down the Rabbit Hole 613

utilize trademark law as a way to prevent copying. 29 Trademarks protect


against consumer confusion by ensuring consumers know the source of
their products. 30 However, trademarks only protect the brand, logo, or
name of the product, and not the design of the product. 31 Therefore,
designers can copy their competitors’ designs, but cannot copy their
registered trademark features. 32 Designers would be forced to affix their
trademark to every design to receive any form of protection. 33
The only copyright protection available for useful articles is for “works
of artistic craftsmanship insofar as their form but not their mechanical or
utilitarian aspects[.]” 34 As a useful article, a fashion design would only be
protected under copyright if its “design incorporates pictorial, graphic, or
sculptural features that can be identified separately from, and are capable
of existing independently of, the utilitarian aspects of the article.” 35
Therefore, the only protection for fashion designs is through what has
come to be known as the “separability analysis.” 36 The main concern for
designers is whether artistic aspects of their designs can be identified
separately and exist independently from the functional aspects of
clothing. 37 A utilitarian article can be either physically or conceptually
separable; “physically separable” means the copyrightable elements can be
physically separated from the utilitarian article without reducing its
function, while “conceptually separable” means the copyrightable elements

29 Hemphill & Suk, supra note 25, at 1176 (“Designers who are protected by trademark and
trade dress innovate in ways that play to these legal advantages.”).
30 Christine Cox & Jennifer Jenkins, Between the Seams, A Fertile Commons: An Overview of

the Relationship Between Fashion and Intellectual Property, THE NORMAN LEAR CENTER 12
(2005), https://perma.cc/T3VP-RVY3.
31 See Hemphill & Suk, supra note 25, at 1177 (explaining that if companies can protect

products that display its trademark, they are incentivized to use the trademark consistently on
their products); see also Cox & Jenkins, supra note 30, at 6.
32 Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 227 (2d

Cir. 2012) (finding that the red-sole on a heel with a different upper color is protected by
trademark because of its distinctiveness and ability to identify Louboutin as the designer; but
the same sole in another color (or with both sole and upper of the same color) would not be so
protected because it no longer serves to distinguish its source).
33 Hemphill & Suk, supra note 25, at 1178 (identifying a phenomenon known as

“logoification,” which would lead to clothes that simply convey the wearer’s social status and
remove the ability of consumers to fully express themselves with their clothing choices).
34 17 U.S.C. § 101 (2010) (defining pictorial, graphic and sculptural art works as it pertains

to useful articles).
35 Id.
36 Matthew S. Miller, Piracy in Our Backyard: A Comparative Analysis of the Implications of
Fashion Copying in the United States for the International Copyright Community, 2 J. INT'L MEDIA &
ENT. L. 133, 139–40 (2008).
37 Id.
614 New England Law Review [Vol. 51|3

can be conceptually separated from the article. 38 While it is easy to figure


out if a copyrightable element can be physically separated from the article,
the more difficult analysis is how to define whether an element is
conceptually separable. 39 Courts have differed greatly on the appropriate
way to determine whether copyrightable elements are conceptually
separable from the functional aspects of a useful article; over time, the
courts have developed multiple tests for conceptual separability. 40

1. Circuit Split over the Appropriate Test for Conceptual


Separability

In Varsity Brands, Inc. v. Star Athletica, LLC, the Sixth Circuit decided
whether graphic designs on cheerleading uniforms are subject to copyright
protection. 41 Varsity Brands filed a copyright infringement suit against Star
Athletica for selling cheerleading uniforms using stripes, zigzags, and
color-block graphic designs created and registered by Varsity. 42 The court
ruled that the designs were conceptually separable from the utilitarian
function of a cheerleading uniform, and therefore were copyrightable
works. 43 In making its decision, the court first recited separability tests
previously used by other circuit courts before developing a hybrid version
of its own. 44 The court listed eight different approaches to determining
separability: (1) the Copyright Office’s Approach; (2) the Primary-
Subsidiary Approach; (3) the Objectively-Necessary Approach; (4) the
Ordinary-Observer Approach; (5) the Design-Process Approach; (6) the
Stand-Alone Approach; (7) the Likelihood-of-Marketability Approach; (8)

38 Id. at 140; e.g., Mazer v. Stein, 347 U.S. 201, 215–17 (1954) (finding that the statuette of a

woman used as a lamp base was eligible for copyright because it could literally be physically
separated from the lamp and used as a statuette which is expressly protected by copyright
under sculptural works); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d
Cir. 1980) (finding that the intricate artistic design of a belt buckle was unable to be physically
separated from the buckle itself, but that, conceptually, the intricate design could be separated
from the utilitarian function of the buckle, making it conceptually separable and eligible for
copyright); see also Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 482 (6th Cir. 2015)
(“Physical separability means that the useful article contains pictorial, graphic, or sculptural
features that can be physically separated from the article by ordinary means while leaving the
utilitarian aspects of the article completely intact.”).
39 Varsity Brands, Inc., 799 F.3d at 484 (stating that courts have “struggled mightily” in

trying to test for conceptual separability).


40 Id.
41 Id. at 471.
42 Id. at 470.
43 Id. at 471.
44 Id. at 487–88.
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Patry’s Approach; and (9) the Subjective-Objective Approach. 45 Each of


these approaches, discussed below, provides a different court’s view of
how separability should be determined. 46 Due to the lower courts’
divergent theories on conceptual separability, the Supreme Court’s silence
on the matter, and Congress’ lack of clarification, fashion designers are left
unsure as to which standard will apply to their designs. 47

II. Various Tests for Conceptual Separability and the Uncertainty for
Future Copyright Protection for Fashion Designs

A. The Problem of Copyright Protection with Fashion Designers

With the rampant knockoff market, designers need to know how they
can protect their designs and what changes need to be implemented in
order to predict whether they will have a successful case for infringement
of their designs. 48 Until Congress amends the Copyright Act to protect
fashion, designers need to know what parts of their designs are currently
subject to copyright protection. 49 The multiple tests currently used by
courts to determine conceptual separability are the only clues designers
have in predicting whether their designs contain copyrightable elements
that are “capable of existing independently of the utilitarian aspects of the
article.” 50

B. Multiple Approaches to Determining Conceptual Separability

1. The Primary-Subsidiary Approach

The Primary-Subsidiary approach was developed in the Second Circuit


through an infringement case over the copyright eligibility of ornamental

45 Varsity Brands, Inc., 799 F.3d at 484–85.


46 Id.
47 Barton R. Keyes, Alive and Well: The (Still) Ongoing Debate Surrounding Conceptual

Separability in American Copyright Law, 69 OHIO ST. L.J. 109, 136 (2008); see also Sonja Wolf
Sahlsten, I'm A Little Treepot: Conceptual Separability and Affording Copyright Protection to Useful
Articles, 67 FLA. L. REV. 941, 969 (2015) (stating that the uncertainty creates unfair prejudices
for designers when different courts rule differently on the copyright eligibility of a particular
design).
48 Laura C. Marshall, Catwalk Copycats: Why Congress Should Adopt A Modified Version of the
Design Piracy Prohibition Act, 14 J. INTELL. PROP. L. 305, 326 (2007) (concluding that Congress
must create protections for fashion that would alleviate the uncertainties currently present in
the separability analysis).
49 See Lynsey Blackmon, The Devil Wears Prado: A Look at the Design Piracy Prohibition Act

and the Extension of Copyright Protection to the World of Fashion, 35 PEPP. L. REV. 107, 131 (2007)
(explaining that fashion designers are still trying to increase the protections given by the
Copyright Act).
50 17 U.S.C. § 101 (2010); see Varsity Brands, Inc., 799 F.3d at 484.
616 New England Law Review [Vol. 51|3

belt buckles created by Barry Kieselstein-Cord. 51 This approach asserts that


a pictorial, graphic, or sculptural feature is conceptually separable if the
“primary ornamental aspect” of the design contains artistic features that
are distinguishable from its “subsidiary utilitarian function.” 52 The belt
buckles in question were sold mostly in high fashion stores, as well as
jewelry stores. 53 This was a factor in favor of the artistic features being the
primary ornamental aspect of the buckles—purchasers often chose to wear
the belt buckle on places of their body other than around the waist. 54 The
court found that purchasers could conceptually separate the utilitarian
function of the belt buckle, which is to hold pants up around the waist,
from the ornamental sculptural design, which was akin to jewelry, and
which is expressly protected under the Copyright Act. 55 Therefore, since
the “primary” ornamental design of the belt buckle was paramount to its
“subsidiary” utilitarian function, the court found the buckles were
conceptually separable. 56

2. The Objectively-Necessary Approach

Five years later, the Second Circuit developed the Objectively-


Necessary approach in Carol Barnhart, Inc. v. Econ. Cover Corp. 57 There, the
court decided whether mannequins of a human torso used to display
clothing were useful articles that contained copyrightable features. 58 The
Objectively-Necessary approach states that a pictorial, graphic, or
sculptural feature is conceptually separable if the artistic design is “wholly
unnecessary to [the] performance of the utilitarian function” of the article. 59
In Carol, the court found that any artistic elements added to the

51 Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 990 (2d Cir. 1980).
52 Id. at 993.
53 Id. at 991.

54 Id.
55 Jewelry would be considered a “pictorial, graphic, and sculptural work” under the

Copyright Act of 1976. 17 U.S.C. § 102 (2010); Kieselstein-Cord, 632 F.2d at 993; see 37 C.F.R. §
202.10 (stating that a sculptural work “must embody some creative authorship in its
delineation or form” in order to be copyrightable); see also Ann K. Wooster, Application of
Copyright Law to Jewelry, 30 A.L.R. FED. 2d 577 (2008) (stating that although the old version of
the regulation expressly included examples of such work, which included “artistic jewelry,”
the absence of such examples does not indicate that the Copyright Act does not protect
“artistic jewelry”).
56 Kieselstein-Cord, 632 F.2d at 993.

57 See Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985).

58 Id. at 412 (describing the mannequins as “life-size, without neck, arms, or a back, and

made of expandable white styrene”).


59 Id. at 419.
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mannequins were necessary to create the look of a real human torso. 60 That
look was essential to its utilitarian function of displaying what clothes
would look like on a real human body. 61 The mannequins were life-like
and anatomically correct—design features that were required in order for
the torso to perform its utilitarian function. 62 Therefore, since the
“objectively” artistic designs of the mannequin—its life-like arrangement of
the breasts and shoulders—were “necessary” to its utilitarian function,
accurately displaying the appearance of clothing on the human body, the
court found the mannequins were not conceptually separable. 63

3. The Ordinary-Observer Approach

In the dissent of Carol, Judge Jon Newman offered another approach to


determining conceptual separability. 64 The Ordinary-Observer approach
views a pictorial, graphic, or sculptural feature as conceptually separable if
“the design creates in the mind of the ordinary observer two different
concepts that are not inevitably entertained simultaneously.” 65 Newman
asserts that the design of the article must trigger in the mind a concept that
is separate from the concept created by its utilitarian function. 66 He
explained that the test “is not whether the observer fails to recognize the
object[‘s] [utilitarian function] . . . but only whether the concept of the
utilitarian function can be displaced in the mind by some other concept.” 67
Newman maintained that the judge could consider evidence that would
help to discern alternative concepts that could be evoked by the article,
including how the article is used or displayed, expert opinion, and survey
evidence. 68 Newman asserts, therefore, that since the “ordinary observer”
could entertain the concept of a work of sculptural art in the human torso
completely separate from the concept of a functional mannequin for
displaying clothing, the mannequins were conceptually separable. 69

60 Id. (explaining that “a model of a human torso, in order to serve its utilitarian function,
must have some configuration of the chest and some width of shoulders”).
61 Id. (finding that “the features claimed to be aesthetic or artistic . . . . serve its utilitarian

function . . .”).
62 Id. at 412.
63 Carol Barnhart Inc., 773 F.2d at 419.
64 Id. (Newman, J., dissenting).

65 Id. at 422.

66 Id.

67 Id.

68 Id. at 423.

69 Carol Barnhart Inc., 773 F.2d at 424 (Newman, J., dissenting).


618 New England Law Review [Vol. 51|3

4. The Design-Process Approach

The Second Circuit refined its approach again two years later by
creating the Design-Process Approach. 70 Presented with the question of
copyright eligibility of an artistic design of a bike rack called the RIBBON
Rack, the court ruled that a pictorial, graphic, or sculptural feature is
conceptually separable if the “design elements can be identified as
reflecting the designer’s artistic judgment exercised independently of
functional influences . . . .” 71 The RIBBON Rack was created from a smaller
wire sculpture which was adapted to serve as a bike rack with upper and
lower loops through which the bike could be secured. 72 The designers of
the rack took the wire sculpture, which the court conceded would have
been copyrightable on its own, and modified its original artistic features to
better serve a utilitarian purpose. 73 The modifications included widening
the upper and lower loops to fit the placement of the bike wheels,
straightening the vertical pieces to allow a safer installation, and using
heavy-gauged steel for a more secure system. 74 These were all elements
added not for their aesthetic or artistic appeal, but solely for their
utilitarian value and ability to make the bike rack function properly. 75 The
court found that the fact that the bike rack could be appreciated for its
artistic qualities alone did not change the fact that its “[f]orm and function
[were] inextricably intertwined in the rack, its ultimate design being as
much the result of utilitarian pressures as aesthetic choices.” 76 Therefore,
since the design of the bike rack reflected functional considerations of the
designer, as opposed to artistic judgment, the bike rack was not
conceptually separable. 77

5. Patry’s Approach

William Patry, the leading author on copyright law, provided another


approach to the separability analysis. 78 In his treatise on copyrights, Patry
explained that “physical” and “conceptual” separability were notions that
should not exist. 79 Instead, the focus should be on whether the pictorial,

70 Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).
71 Id.
72 Id. at 1146.
73 Id. at 1146–47.
74 Id.
75 Id.
76 Brandir Int'l, Inc., 834 F.2d at 1147.
77 Id. at 1145.
78 2 PATRY ON COPYRIGHT § 3:146.
79 Id.
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graphic, or sculptural features of a useful article are separable from the


utilitarian aspects of the article, not from the article itself. 80 This approach
emphasizes that the protected features need not be capable of existing
apart from the article, only from its functional aspects. 81 The pictorial,
graphic, or sculptural features should not be controlled by the form or
function of the useful article, although its functionality may influence its
creation. 82

6. The Stand–Alone Approach

The Seventh Circuit was faced with determining whether the design of
Mara, a sculpture of a bareheaded female human head with no makeup or
hair, sculpted to give the look of high fashion runway models, was
copyrightable. 83 The court presumed that Mara was a useful article even
though the plaintiff firmly denied that Mara would be categorized as a
useful article because its purpose was to portray the appearance of runway
models. 84 Although the majority found that the heads were conceptually
separable using the Design-Process approach from the Second Circuit,
Judge Michael Kanne in his dissent offered a different approach. 85 Kanne’s
dissent suggested that a pictorial, graphic, or sculptural feature is
conceptually separable if the useful article’s functionality remains
unimpaired once the copyrightable material is removed. 86 Therefore, since
Mara would no longer serve her purpose as a beauty school training tool
for students styling hair and applying makeup to live models if her
copyrightable features—her face—were removed, Mara would not be
conceptually separable. 87

80 Id.
81 Id.; see also 1 WILLIAM F. PATRY, COPYRIGHT LAW AND PRACTICE 285 (1994).
82 Keyes, supra note 47, at 138 (analogizing to find similarities between Patry’s approach

and the Objectively-Necessary approach which requires no influence from the functionality of
the article).
83 See Pivot Point Int'l, Inc. v. Charlene Products, Inc., 372 F.3d 913, 915–16 (7th Cir. 2004)

(describing Mara as displaying the “hungry look” of a high-fashion runway model).


84 17 U.S.C. § 101 (2010) (stating that a useful article does not include articles whose

purpose is merely to portray the appearance of the article or to convey information); Pivot
Point Int’l, Inc., 372 F.3d at 919.
85 Pivot Point Int’l, Inc., 372 F.3d at 931; see also id. at 933 (Kanne, J., dissenting) (citing

Professor Goldstein’s treatise which states the “design of a useful article is conceptually
separable if it can stand on its own as a work of art traditionally conceived, and if the useful
article in which it is embodied would be equally useful without it”).
86 Id. at 933 (Kanne, J., dissenting) (explaining that Mara would cease to be useful if her
facial features were removed—“the mannequin’s head and neck would be little more than an
egg on a stick, useless for its intended purpose”).
87 Id.
620 New England Law Review [Vol. 51|3

7. The Likelihood–of–Marketability Approach

The Fifth Circuit decided a case concerning casino uniforms crafted by


a clothing designer and sold to Harrah’s casinos. 88 The uniform collection
included uniform jackets, shirts, hats, and vests, all highly artistic and
uniquely made. 89 The court, adopting an approach from Nimmer’s leading
treatise on copyright, stated that a pictorial, graphic, or sculptural feature is
conceptually separable if “there is [a] substantial likelihood that even if the
article had no utilitarian use it would still be marketable to some significant
segment of the community simply because of its aesthetic qualities.” 90 The
court analyzed other cases on the issue and found that, generally,
copyright eligibility may depend on the value of the aesthetic elements of
the utilitarian article as a solitary work of art. 91 However, the court was
very firm in clarifying that this standard would only be applicable for
separability determinations concerning clothing. 92 The court reasoned that
the designs of the casino uniforms would have no market value outside of
their utilitarian use as a uniform. 93

8. Possible Hybrid Approaches

The Fourth and Sixth Circuit Courts both used a hybrid version of
multiple tests previously discussed. 94 In the Fourth Circuit, the court
considered the decorative and sculptural designs on a line of designer
furniture. 95 The court ruled that the three-dimensional decorative elements
were conceptually separable and therefore subject to copyright
protection. 96 In making its decision, the court used a combination of the
Objectively-Necessary approach from Carol Barnhart and the Design-

88 Galiano v. Harrah's Operating Co., 416 F.3d 411, 413 (5th Cir. 2005).
89 Id. at 413–14 n.3.
90 Id. at 419; see also 1-2 NIMMER ON COPYRIGHT § 2.08 (2016) [hereinafter NIMMER].
91 See Galiano, 416 F.3d at 420 (citing Poe v. Missing Persons, 745 F.2d 1238, 1242 (9th Cir.

1984)) (discussing a copyright eligible swimsuit that was sold primarily as a work of art which
portrayed the look of a swimsuit).
92 Id. at 421 (“We therefore adopt the likelihood-of-marketability standard for garment

design only.”).
93 Id. at 422 (stating that the plaintiff provided no evidence that the “designs [would be]

marketable independent[] of their utilitarian function as casino uniforms” and that she could
not demonstrate that her uniforms had extravagant designs).
94 See Varsity Brands, Inc. v. Star Athletica, L.L.C., 799 F.3d 468, 488 (6th Cir. 2015) (using
elements from the tests used in Carol Barnhart and Pivot Point to explain its decision); see also
Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 434 (4th Cir. 2010).
95 See Universal Furniture Int’l, Inc., 618 F.3d at 426.
96 See id. at 434.
2017] Down the Rabbit Hole 621

Process approach from Brandir. 97 The decorative elements on the furniture


included carvings, shells, and leaves which were added onto the furniture
itself. 98 These added design elements were found to be “wholly
unnecessary” to the furniture’s useful function; they provided nothing in
the way of enhancing the furniture’s purpose as something to sit on or to
hold objects. 99 Essentially, they were purely decorative. 100 In addition, the
Court found that the designer’s creative process was dominated by
aesthetic goals; he was inspired to combine and blend looks from different
historical periods, he researched and compiled designs from the public
domain which he adapted to create something that had never been seen
before. 101 Therefore the designer’s artistic decisions were separate from any
functional influences. 102
Similarly, in Varsity, the Sixth Circuit also combined the Design-
Process approach and the Objectively-Necessary approach in determining
graphic designs on cheerleading uniforms were conceptually separable and
subject to copyright protection. 103 The court found that the stripes and
zigzags were unnecessary to the uniform’s purpose, and that the designers
first sketched their designs before placing them on the uniform, thus
establishing that functionality was not an influence on the design. 104

C. The Copyright Approach

The Copyright Office is the leading agency on copyright protection; it


determines whether an original work of authorship is eligible for copyright
protection. 105 In the Copyright Office Compendium, a manual used
primarily by employees as a guide in determining copyrights, the

97 Id. (quoting the Design-Process approach used in Pivot Point, but developed in Brandir);

see also Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).
98 Universal Furniture Int’l, Inc., 618 F.3d at 434 (describing the collection as “highly

ornate . . . adorned with three-dimensional shells, acanthus leaves, columns, finials, rosettes,
and other carvings”); see also id. at 435 (finding the aesthetic features were “superimposed
upon[] an otherwise utilitarian article”).
99 Id. at 434 (citing Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 419 (2d Cir.
1985).
100 Id.
101 Id. at 425 (claiming that the designer wanted to “bring something new to the party”).
102 Id. at 434 (“[H]is objective in compiling these decorative elements onto the basic shapes

of the furniture was not to improve the furniture’s utility but to ‘give [the pieces] a pretty
face.’”).
103 Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 488 (6th Cir. 2015).
104 Id. at 491–92 (explaining that the designs were separately applied to the uniforms and
could be embodied on other clothing as well, including jackets, t-shirts, and warm-ups).
105 Overview of the Copyright Office, COPYRIGHT.GOV, https://perma.cc/JKC5-TJ3C (last

visited July 11, 2017).


622 New England Law Review [Vol. 51|3

Copyright Office established its own test for conceptual separability. 106 It
instructs that a pictorial, graphic, or sculptural feature is conceptually
separable if “the artistic feature and the useful article could both exist side-
by-side and be perceived as fully realized, separate works—one an artistic
work and the other a useful article.” 107

ANALYSIS

III. Each of These Tests Lacks the Ability to Consistently and


Effectively Predict Which Designs will be Protected by Copyright

A. The Primary-Subsidiary Approach is Unpredictable Because It Leaves


Artistic Determinations to the Individual Tastes and Preferences of
Judges

The Primary-Subsidiary approach for separability creates difficulty for


the trier of fact in determining the primary ornamental aspects and the
subsidiary utilitarian function of the article. 108 First the court must
determine what is “primary” and what is “subsidiary.” 109 This leaves too
much discretion to the judge to determine the aesthetic qualities of art as
well as to decide what is the subsidiary function of an article. 110 Judges are
not qualified to make such artistic determinations because they were never
meant to establish what is considered “art.” 111 In fact, this approach
extends the ability to decide what is art to the public by allowing them to
determine what they feel can be considered art. 112 The fact that the
subjective view of the belt wearers in Kielselstein-Cord determined what

106 U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 101, ch.
924.2(B) (3d ed. 2017) [hereinafter COMPENDIUM].
107 Id. (providing examples such as a colorful pattern decorating the surface of a shopping

bag, and a floral relief decorating the handle of a spoon).


108 John B. Fowles, The Utility of a Bright-line Rule in Copyright Law: Freeing Judges from

Aesthetic Controversy and Conceptual Separability in Leicester v. Warner Bros., 12 UCLA ENT. L.
REV. 301, 314 (2005) (discussing the lack of guidance for evaluating primary ornamental
features and subsidiary utilitarian functions).
109 Id. at 314–15.
110 Id. at 316 (“[T]he aesthetic input required of the judges in such cases . . . interferes with
the whole field of conceptual separability.”).
111 See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903) (explaining that

judges should not determine the worth or value of art, or even determine what can be
considered “art”).
112 See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980)
(holding that the wearers of the belt buckles saw them aesthetically as ornaments because
they wore them on their bodies in places other than their waist).
2017] Down the Rabbit Hole 623

was a “primary” aesthetic feature of the belt buckle is exactly the type of
unpredictable test that should not be allowed in copyright
determinations. 113
If the court were to apply this test to clothing, it would first be required
to determine the ornamental aspect of the specific piece of clothing, and
then determine whether it is primary to the subsidiary function of the
clothing. 114 The shape of the clothing (the clothing design) cannot be
considered a “primary ornamental aspect” because as a useful article it is
precisely the shape of clothing which gives it its useful character and
classifies it as a useful article. 115 Therefore only clothing which contained
some additional fabric, embroidery, lace or similar ornamentation will first
undergo the separability test. 116 The Primary-Subsidiary approach would
fail to protect any clothing because the court would be hard-pressed to find
a fabric or embroidery design that was primary to the subsidiary function
of clothing. 117 Were this test to be applied to the cheerleading uniforms in
Varsity, the court most likely would have found the stripes and zigzags
were not primary to the subsidiary function of the uniform. 118 Unlike the
belt buckles, the uniforms were not worn as anything other than

113 See Bleistein, 188 U.S. at 251 (discussing the fact that a picture is still a picture regardless

of its ability to attract an audience; its nature does not remove it from copyright); see also id. at
251 (“It would be a dangerous undertaking for persons trained only to the law to constitute
themselves final judges of the worth of pictorial illustrations, outside of the narrowest and
most obvious limits.”).
114 See Kieselstein-Cord, 632 F.2d at 993.

115 See Knitwaves, Inc. v. Lollytogs Ltd., Inc., 71 F.3d 996, 1002 (2d Cir. 1995) (holding that

fabric designs on clothing are protectable by copyright); Whimsicality, Inc. v. Rubie's Costume
Co., 891 F.2d 452, 455 (2d Cir. 1989); see also Express, LLC v. Fetish Grp., Inc., 424 F. Supp. 2d
1211, 1224 (C.D. Cal. 2006) (finding that lace and embroidery elements on clothing were
immaterial to the clothing’s utilitarian function); Jovani Fashion, Ltd. v. Cinderella Divine,
Inc., 808 F. Supp. 2d 542, 547 (S.D.N.Y. 2011) (“It is well settled that dress designs are useful
articles for the purposes of the Copyright Act and thus ‘are not typically copyrightable.’”); Eve
of Milady v. Impression Bridal, Inc., 957 F. Supp. 484, 489 (S.D.N.Y. 1997) (holding that
clothing is not subject to copyright, not to be confused with fabric or textile designs, which can
be subject to copyright). See generally 2 PATRY ON COPYRIGHT § 3:151 [hereinafter PATRY].
116 PATRY, supra note 115 (explaining that only when the fabric (or other) design is used

should the court use the separability test, otherwise, the shape of the clothing is not
copyrightable).
117 See generally Julie P. Tsai, Comment, Fashioning Protection: A Note on the Protection of

Fashion Designs in the United States, 9 LEWIS & CLARK L. REV. 447, 460 (2005) (“Clothing is
inherently useful and only in the very rare case, where the clothing can be viewed as ‘soft
sculpture’ rather than solely utilitarian, is the design likely to receive copyright protection.”).
118 See generally Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 490 (6th Cir. 2015)
(describing the utilitarian function of cheerleading uniforms as “cover[ing] the body,
wick[ing] away moisture, and withstand[ing] the rigors of athletic movements”).
624 New England Law Review [Vol. 51|3

cheerleading uniforms (or generally as clothing), regardless of the


additional stripes and zigzags. 119 The court would be bound by the fact that
wearers of the uniforms have found no other ornamental function for the
uniform. 120 In requiring courts to find the ornamental features of a useful
article as primary to its utilitarian function before providing copyright
protection, the court completely removes fashion designs from copyright
protection. 121

B. The Ordinary-Observer Approach Fails Because it is an Entirely


Subjective Assessment and Involves Vague Classifications Which
Cannot be Consistently Applied

The Ordinary-Observer approach is entirely subjective and left to the


eye of the beholder—or “mind” of the beholder. 122 It requires the design to
create a concept in the mind that displaces the utilitarian function. 123 This is
a very unpredictable standard for the trier of fact to apply because, at best,
as long as one person could conceive a concept of “art” apart from the
utilitarian function of the useful article it would be considered conceptually
separable. 124 It is well established that fashion designs are useful articles,
but this broad test would ultimately allow all fashion designs to be
protected by copyright. 125 Allowing all fashions designs to be copyrightable
would defeat the purpose of the useful article doctrine which is to prevent
a monopoly over the use or creation of an article with a utilitarian
function. 126 At worst, the trier of fact would be unable to agree about
whether a separate concept can be evoked by the useful article. 127 Thus, this

119 See id. at 471.


120 See id.
121 See Hedrick, supra note 10, at 229 (“Though this exception to the general exclusion of

clothing from copyright provides a pocket of design protection, it is truly meaningless


because most designs do not satisfy the conceptual separability tests.”).
122 See Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 423 (2d Cir. 1985) (Newman,

J., dissenting) (admitting that some judgment of the work of art is necessary to determine
whether a “concept of art” is created in the mind).
123 Id. at 422.
124 Jennifer Mencken, A Design for the Copyright of Fashion, B.C. INTELL. PROP. & TECH. F. 1,
25–30 (1997).
125 See id.
126 See Viva R. Moffat, The Copyright/Patent Boundary, 48 U. RICH. L. REV. 611, 611–12 (2014)
(stating that protection for such articles would be found in patent law); Sepehr Shahshahani,
The Design of Useful Article Exclusion: A Way Out of the Mess, 57 J. COPYRIGHT SOC'Y U.S.A. 859,
873 (2010) (“[C]opyright is not supposed to award monopolies in useful articles.”).
127 Keyes, supra note 47, at 140 (“Ordinary reasonable people will always disagree about
the nature of art because it is a matter of personal taste and imagination. For the same reason,
ordinary reasonable people would disagree about whether a useful article can evoke a
2017] Down the Rabbit Hole 625

abstract test could also leave clothing designs completely unprotected


because the decision would be based on the nature of the art which is “a
matter of personal taste and imagination.” 128
Designers could not use this standard to determine whether their
designs would be protected; this inquiry is entirely subjective and
dependent on the mind of some “ordinary-observer” who may or may not
find an artistic concept within the designers’ clothing. 129 Applied to the
cheerleading uniforms, the Ordinary-Observer approach would require the
judge to see a work of art that could displace the concept of a cheerleading
uniform. 130 It is difficult to see how the stripes or zigzag patterns on the
cheerleading uniform creates a concept of a work of art strong enough to
displace the concept of the utilitarian function of the uniform itself. 131

C. The Design-Process Approach is Expressly in Contradiction with the


Copyright Act Because It Focuses on the Designer’s Intentions
Instead of the Final Product

Although the Design-Process approach would avoid the issue of


subjective judgment on the nature of the art, it allows copyright eligibility
to depend on the intent of the designer. 132 The Design-Process approach
requires a look into the mind of the designer during the creation process to
determine if the artistic elements of the design were influenced by
functional needs. 133 It allows copyright protection on the basis of the
process, or work put into the design, instead of based solely on the final
artistic product—a basis expressly denied protection in copyright law. 134

separate concept.”).
128 Keyes, supra note 47, at 140.
129 See Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 419 n.5 (2d Cir. 1985)
(finding the Ordinary-Observer approach to be essentially a “non-test” that would be
impossible to apply); see also Keyes, supra note 47, at 140.
130 See Keith Aoki, Contradiction and Context in American Copyright Law, 9 CARDOZO ARTS &

ENT. L.J. 303, 341 (1991).


131 See generally Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 470–77 (6th Cir.

2015) (discussing whether the “pictorial, graphic, or sculptural features” that are incorporated
into the design of a useful article should be identified separately from the article and can exist
independently of the utilitarian aspect of the article).
132 See Keyes, supra note 47, at 137 (describing one of the problems of this test as “turn[ing]

on fortuitous circumstances”).
133 See Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987).

134 See Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 353 (1991) (rejecting the

“sweat of the brow” doctrine by holding that the amount of work put into the creation of a
work does not render it protected by copyright, essentially moving away from a process-based
theory of copyright eligibility); see also Meshwerks, Inc. v. Toyota Motor Sales U.S.A., Inc., 528
F.3d 1258, 1268 (10th Cir. 2008) (holding that the court must only look at “the final product, not
626 New England Law Review [Vol. 51|3

Fashion designers would be encouraged to testify extensively about the


artistic influences and motivations behind their designs, and that the
utilitarian function of the clothing was not present in their design process
at all. 135 Under this approach, the cheerleading uniforms would likely be
protected by copyright due to testimony that the designers were not
influenced by the functionality of the uniforms when creating the sketches
for the designs. 136 In fact, this test could make it fairly easy for designers to
gain protection as long as they can provide evidence of the nonfunctional
thought-processes and motivations behind their designs. 137

D. The Stand-Alone Approach Cannot Properly Determine Copyright


Eligibility Because It Solely Protects “Traditional” Works of Art

The Stand-Alone approach fails because it involves the subjective


analysis of whether aesthetic elements of a useful article could “stand on its
own as a work of art traditionally conceived.” 138 This is problematic for the
same reasons previously stated: the judge’s subjective analysis of the
nature of the work of art has no place in copyright law. 139 In requiring the
aesthetic elements to be a “traditional” work of art, the court must
categorize and determine what are considered “traditional” works of art. 140
This test allows personal judgments and opinions about the nature of the
art to determine copyright eligibility. 141 There is certainly nothing more
unpredictable for designers than having to rely on the judges’ personal
opinions concerning their creations; such a test cannot effectively govern

the process” in creating the work); Sahlsten, supra note 47, at 962 (criticizing the Design-
Process approach for basing copyright eligibility on the process of creating the work instead
of on the final result).
135 Sahlsten, supra note 47, at 963.

136 Varsity Brands, Inc., 799 F.3d at 471 (“When creating these designs, the designers do not

consider functionality of the uniform or the ease of producing a full-sized uniform that looks
like the sketch.”).
137 See Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d 542, 548 (S.D.N.Y.

2011) (finding that this argument could render all clothing protectable if the designer were
allowed to subjectively claim that nonfunctional motivations were always behind their
aesthetic choices). Even the Jovani court chose to use the Design-Process approach and yet still
denied protection to the designs of specific elements found in the plaintiff’s prom dresses. Id.
at 550. This is a testament to the inconsistent results of this test and inability of designers to
effectively predict whether this test will result in protection for their designs. See id. at 548.
138 See Keyes, supra note 47, at 139 (emphasis added).
139 See Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 251 (1903); Sahlsten, supra
note 47 at 964.
140 See Sahlsten, supra note 47, at 964–65 (finding that this approach would be harmful to

types of art which are not considered “traditional” including abstract and modern art).
141 See Sahlsten, supra note 47, at 964.
2017] Down the Rabbit Hole 627

copyright protections for fashion designs due to the individual and


personal tastes involved in clothing choices. 142 If the court were to apply
the Stand-Alone approach to the cheerleading uniform design from Varsity,
the court would likely not approve it for copyright protection because
lines, stripes, and color blocks would not be considered traditional art. 143 If
the plaintiff is lucky, the judge may be willing to consider the stripes, lines,
and zigzags on the uniform as traditional art. 144 However, the
unpredictability of this test is clear in Jovani where the designer’s prom
dresses were not afforded protection because the court could see no value
in the aesthetic elements of the dress alone. 145 The entire outcome of the
decision depended on whether the judge could view the elements of the
dress as abstract art. 146 That would be the only category of art left for pieces
of tulle, beads, sequins and satin pulled apart from the dress in which they
were incorporated. 147

E. The Likelihood-of-Marketability Approach is Difficult Because It


Requires That There be an Entirely Separate Market for the Aesthetic
Design Itself

The problem with the Likelihood-of-Marketability approach is how to


determine whether an aesthetic element of a fashion design would be
marketable if it were separated from the clothing’s utilitarian function. 148
The court in Galiano denies copyright registration to casino uniform
designs because the plaintiff could not “[show] that its designs [were]
marketable independent[] of their utilitarian function as casino

142 See Hemphill & Suk, supra note 25, 1164 (describing the need for consumers of fashion

to express themselves through personal tastes and choices in the variety of designs available);
see Sahlsten, supra note 47, at 964.
143 See Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 492 (6th Cir. 2015).
144 Id. (“Indeed, ‘nothing (save perhaps good taste) prevents’ Varsity from printing or
painting its designs, framing them, and hanging the resulting prints on the wall as art.”).
145 Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d 542, 550 (S.D.N.Y. 2011)

(stating that the sequins, beads, tulle and other decorative elements of the dress, if removed,
would have no value outside the dress).
146 Id. (“It is not enough that an element can be ripped off the larger useful article; it must
have some value in its freestanding form.”).
147 See Hedrick, supra note 10, at 269 n.287 (“[T]here will be some jurors who will not be

capable of finding the ‘art’ in the work and others [sic] jurors who will be much more
appreciative of the nuances.”); see also Keyes, supra note 47, at 139 (explaining that abstract art
will be at a disadvantage in this approach to conceptual separability).
148 NIMMER, supra note 90 (“[C]onceptual separability exists where there is any substantial
likelihood that even if the article had no utilitarian use it would still be marketable to some
significant segment of the community simply because of its aesthetic qualities.”).
628 New England Law Review [Vol. 51|3

uniforms.” 149 The court limits this test to clothing designs; however, it is
difficult to see how any aspect of a clothing design would be marketable
and sold separately from the garment in which it is incorporated. 150
Clothing is not analogous to the belt buckles from Kieselstein-Cord which
were sometimes worn not as belt buckles, but as decorative pieces on other
parts of the body. 151 The sequins, beads, and tulle designs on the Jovani
prom dress would be difficult to market and sell as anything other than
parts of a prom dress; and the stripes, zigzags, and lines on the Varsity
cheerleading uniform would likely find no market outside of a
cheerleading uniform. 152 Essentially this approach is likely to leave clothing
designs completely without protection. 153

F. Hybrid Approaches Fail Because They Allow Judges to Pre-Determine


the Final Outcome and Use Any Test to Reach Their Own
Conclusions

Using a hybrid approach to conceptual separability allows courts to


pick and choose which tests they favor, and apply those tests in whatever
fashion they like. 154 Unpredictability is at its highest in the hybrid approach
because the designer will never know which test the court will apply to
their design. 155 The Fourth Circuit in Universal and the Sixth Circuit in
Varsity both used the Objectively-Necessary and Design-Process
approaches in determining that decorative elements on the furniture and
cheerleading uniforms, respectively, were protectable. 156 In Jovani, the court
discussed and applied every separability test to the prom dresses before

149 Galiano v. Harrah's Operating Co., 416 F.3d 411, 422 (5th Cir. 2005).
150 See id. at 421.
151 Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 991 (2d Cir. 1980).

152 See Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 489 (6th Cir. 2015) (rejecting

the likelihood-of-marketability test because it “privileges a judge's personal taste in popular


art [and] is often based entirely on conjecture”); Jovani Fashion, Ltd. v. Cinderella Divine, Inc.,
808 F. Supp. 2d 542, 551 (S.D.N.Y. 2011) (finding that the elements have no marketable use
outside of the use on a woman’s dress or other clothing).
153 See generally M.C. Miller, Copyrighting the "Useful Art" of Couture: Expanding Intellectual

Property Protection for Fashion Designs, 55 WM. & MARY L. REV. 1617, 1631 (2014) (quoting an
advocate for fashion copyrights: “A ball gown is a work of art. What else are you going to do
with it? Clean the house?”).
154 See Shahshahani, supra note 126 at 869–70 (discussing the combinations of tests used by

several courts throwing them together “to top off the mix”).
155 See Shahshahani, supra note 126 at 871–72 (finding that the use of multiple tests has left

“the current state of doctrine . . . a mess” and a “wild jumble of contradictory tests and non-
tests”).
156 Varsity Brands, Inc., 799 F.3d at 488; Universal Furniture Int'l, Inc. v. Collezione Europa

USA, Inc., 618 F.3d 417, 434 (4th Cir. 2010).


2017] Down the Rabbit Hole 629

deciding that none of them would allow for copyright protection. 157 But
allowing the court to decide which test it sees fit to apply is not a practical
solution for designers who need to know whether their designs will be
protected. 158 There are too many tests available; it would be impossible to
assure compliance with all of them simply to ensure protection under at
least one of them. 159 Hybrid approaches do not provide any guidance for
designers on what kind of alterations they can make to their designs in
order to gain copyright protection. 160

IV. The Copyright Office Approach is the Best Test for Separability
Because it Provides Predictability for Designers Who Can Determine
Whether the Non-functional Aspects of Their Designs are
Copyrightable

A. The Copyright Office Approach

1. Deference Should Be Given to the Copyright Office Due to


Its Vast Experience in Copyright Determinations

The Copyright Office was created by Congress to examine and


approve registration of copyright claims in works of art, making it the
leading agency concerning copyright matters. 161 The Copyright Office is
usually afforded deference by courts concerning duties delegated to it by
Congress. 162 Registration with the Copyright Office creates a presumption
of validity, but that presumption may be rebutted by facts that challenge
the validity of the copyright. 163 The Copyright Office’s experience in
determining the difference between art and useful articles is superior to

157 Jovani Fasion, Ltd., 808 F. Supp. 2d at 550–51.


158 See Marshall, supra note 48, at 315 (finding that the multitude of tests have not helped to
clarify the requirement of conceptual separability).
159 See generally Fowles, supra note 108 at 322 (“[J]udges could easily drown in this excess of

tests”).
160 See Briggs, supra note 20, at 184 (arguing that designers have tried all kinds of tactics in

attempt to gain copyright protection) (“A clothing designer choosing to assert copyrightability
for her creations therefore has three options: argue for complete copyrightability of the
designs addressing each of the separability tests; find a way to define the designs as
something other than a useful article and avoid the separability tests altogether[;] or settle for
partial copyrightability for judicially recognized separable aspects of the designs.”).
161 See Overview of the Copyright Office, supra note 105.
162 5 PATRY ON COPYRIGHT § 17:102 (explaining the difference between Chevron and
Skidmore deference and affording the Copyright Office Skidmore deference as based on its
power to persuade).
163 Thomas G. Field, Jr., Judicial Review of Copyright Examination, 44 IDEA: THE J. L. & TECH.

479, 485 (2004).


630 New England Law Review [Vol. 51|3

that of the courts because they tackle such decisions regularly. 164 Therefore,
the Copyright Office should be given high deference in the determination
of copyright protection for fashion designs as useful articles. 165

2. The Copyright Office Approach Remains True to the


Purpose of the Copyright Act

The Copyright Office states that conceptual separability exists in “[a]


pictorial, graphic, or sculptural feature . . . only if the artistic feature and
the useful article could both exist side by side and be perceived as fully
realized, separate works—one an artistic work and the other
a useful article.” 166 This approach is detailed in the Copyright Office’s
internal manual which instructs employees on how to apply the Copyright
Act to submitted claims. 167 Applied consistently to fashion designs, the
Copyright Office could effectively predict which elements of a design are
protectable under copyright. 168 The requirement that the aesthetic features
be separable such that a useful article and an artistic work are created finds
support in the U.S. Supreme Court case Mazer v. Stein. 169 This case held that
a work of art embodied in a useful article could still be protected by
copyright as long as it would be copyrightable absent the useful article in
which it was embodied. 170 The Copyright Office approach simply takes that
holding and applies it, by requiring that in order to receive protection, the
aesthetic features on a useful article must be eligible for copyright as an

164 United States v. Mead Corp., 533 U.S. 218, 235–36 (2001) (stating that U.S. Customs

brings a “specialized experience to bear on the subtle questions in this case”); see also Varsity
Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 480 (6th Cir. 2015) (finding that the district
should have given more deference to the Copyright Office’s registration determination);
Southco, Inc. v. Kanebridge Corp., 390 F.3d 276, 286 n.5 (3d Cir. 2004) (explaining that the
Copyright Office has experience and informed judgment that courts should follow for
guidance); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 994 (2d Cir. 1980) (“The
Copyright Office continually engages in the drawing of lines between that which may be and
that which may not be copyrighted.”).
165 See generally Varsity Brands, Inc., 799 F.3d at 480 (holding that the district court failed by

not giving greater deference to the Copyright Office’s determinations).


166 COMPENDIUM, supra note 106.
167 COMPENDIUM, supra note 106, at 1–2.
168 See U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES

§924.3(A)(1) (3d ed. 2017) [hereinafter COMPENDIUM II] (allowing fabric and textile designs
to be copyrighted and providing guidance for designers on areas to alter clothing in order to
gain copyright protection).
169 Mazer v. Stein, 347 U.S. 201, 218 (1954).
170 Id. (“We find nothing in the copyright statute to support the argument that the
intended use or use in industry of an article eligible for copyright bars or invalidates its
registration . . . . Nor do we think the subsequent registration of a work of art published as an
element in a manufactured article, is a misuse of the copyright.”).
2017] Down the Rabbit Hole 631

artistic work on their own. 171


Under this approach, fashion designers would only need to concern
themselves with the basic requirement for copyright protection: originality
and fixation. 172 In order for a designer to gain copyright protection, the
clothing would need to contain some pictorial, graphic, or sculptural work
that would, on its own, be sufficiently original and fixed, while still leaving
the useful article just as useful. 173 This approach remains true to the
purpose of the Copyright Act—to promote the creation of art and reward
artists for their innovations. 174 By ensuring that the aesthetic features of the
useful article be separately eligible for copyright, this approach enhances
that purpose and encourages even more creativity. 175 It alleviates the
difficulties of trying to discern the subjective intent of the artist and
evaluates the process through which the art was created, which are the
problems inherent in the Ordinary-Observer and Design-Process
approach. 176 This is an objective test that focuses on copyrightable subject
matter and requires the artist to create elements that are themselves
copyrightable if they expect it to be considered separable from the
utilitarian object. 177 This approach is superior because it eliminates the
problems created by the other tests for conceptual separability, yet still
combines certain concepts embodied in many of them. 178

171 See Alexandra Manfredi, Haute Copyright: Tailoring Copyright Protection to High-Profile

Fashion Designs, 21 CARDOZO J. INT'L & COMP. L. 111, 129 (2012).


172 17 U.S.C. § 102 (2010) (“Copyright protection [exists]. . . in original works of authorship

fixed in any tangible medium of expression . . . .”).


173 See COMPENDIUM II, supra note 168.

174 U.S. CONST. art. I, § 8, cl. 8.

175 See generally Erez Reuveni, Copyright, Neuroscience, and Creativity, 64 ALA. L. REV. 735,

735 (2013) (noting that the purpose of copyright law is to encourage creativity).
176 See Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 423 (2d Cir. 1985) (Newman,

J., dissenting) (detailing the Ordinary-Observer approach requiring subjective inquiry into the
mind of the beholder); see also Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d
542, 550 (S.D.N.Y. 2011) (applying a subjective look into the process of the designer).
177 See Hedrick, supra note 10, at 231 (“[T]he Copyright Office will register. . . if any portion
of a work can reasonably be construed as containing copyrightable authorship . . . .”) (internal
quotation marks omitted). See generally Fowles, supra note 108, at 310 (stating that Congress’
intent was to create a clear line that inherently aesthetic qualities would be copyrightable).
178 The Copyright Office approach combines the Objectively-Necessary approach and the

Patry approach which both require the aesthetic features to be unnecessary to the utilitarian
aspects of the useful article, as well as parts of the Stand-Alone approach. See Keyes, supra
note 47, at 138.
632 New England Law Review [Vol. 51|3

V. The Application of the Copyright Office Approach to Fashion


Designs is Simple, Effective, and Properly Determines Copyrightable
Fashion Designs from Those Which Cannot Be Protected

A. Conceptual Separability for Useful Articles Under the Copyright


Office Approach

The Copyright Office approach applied to the belt buckles from


Kieselstein-Cord would allow copyright protection because the buckles meet
the minimum requirement of originality and fixation while still functioning
as a useful article. 179 Applied to the bike rack from Brandir, the Copyright
Office approach would likely allow protection as well, assuming the bike
rack meets the minimum requirement of originality as a sculptural work of
art. 180 The fact that the bike rack was altered to meet a functional purpose
would not negatively affect its copyright eligibility because it would
simply be analogized to copyrights for architecture which are also
functional. 181 The furniture discussed in Universal would still be
copyrightable because the decorative elements could be registered as
“[o]riginal decorative designs . . . including original adaptations of public
domain designs and original compilations of decorative designs.” 182 These
elements are copyrightable separate from the utilitarian tables and chairs
on which they appear. 183 The Copyright Office approach would also
protect the model head mannequins from Pivot Point because it was a
particularized expression of the “hungry look” on a model which received
protection. 184 Finally, the Copyright Office approach may allow copyright
protection for the cheerleading uniforms in Varsity as long as the stripes,

179 See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980); see

also Boucher v. Du Boyes, Inc., 253 F.2d 948, 949 (2d Cir. 1958) (finding artistic jewelry eligible
for copyright protection).
180 See 17 U.S.C. § 101 (2010); Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142,

1151–52 (2d Cir. 1987) (Winter, J., dissenting) (arguing that the bike rack standing alone would
enjoy status as a work of sculptural art).
181 See 17 U.S.C. § 101 (2010); David E. Shipley, The Architectural Works Copyright Protection

Act at Twenty: Has Full Protection Made A Difference?, 18 J. INTELL. PROP. L. 1, 8 (2010)
(describing protection for architecture as necessary because it is a form of artistic expression:
“Architecture plays a central role in our daily lives, not only as a form of shelter or as an
investment, but also as a work of art.”).
182 Universal Furniture Int'l, Inc. v. Collezione Europa USA, Inc., 618 F.3d 417, 425 (4th Cir.

2010) (describing the details of the copyright registration received).


183 Id. at 426 (summarizing the finding from the lower court that the elements satisfied the

originality requirement for copyright protection).


184 See Pivot Point Int'l, Inc. v. Charlene Products, Inc., 372 F.3d 913, 931 (7th Cir. 2004)
(explaining that the artist created Mara without functional considerations but simply as a
sculpture of a model’s head which is sufficient originality for copyright protection).
2017] Down the Rabbit Hole 633

zigzags, and lines are sufficient to meet the originality requirement for
copyright protection. 185 However, this approach would render ineligible
for copyright the torso mannequins from Carol Barnhart and the casino
uniforms from Galiano because both are lacking originality for separate
copyright protection. 186

B. Conceptual Separability for Fashion Designs Under the Copyright


Office Approach

The fashion industry would receive broader copyright protections by


using the Copyright Office approach to conceptual separability. 187 Instead
of attempting to find protection for the fashion design as a whole,
designers would receive protection for the elements of their clothing that
would have been protected absent its incorporation in clothing. 188 This
approach reinforces the concept that the shape of clothing, including
hemlines, dress shapes, and tailoring would not be protected, but still
allows protection for additional incorporated materials such as a design
sewn onto the fabric, 189 an arrangement of patterns, 190 or compilations of
beads, sequins, and tulle. 191 So long as the non-useful aesthetic design
meets the minimum requirement for copyright, it should be eligible for
copyright protection. 192

185 Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 476 (6th Cir. 2015) (stating that

parties did not address the issue of originality, so the court made no judgment on whether the
designs would satisfy the originality requirement for protection).
186 See Galiano v. Harrah's Operating Co., 416 F.3d 411, 413 n.3 (5th Cir. 2005) (describing

the clothing submitted for copyright as uniform jackets with a semi-fitted look, shirts with
concealed buttons, and vests with princess lines—none of which can be copyrighted because
they consist of the shape of the clothing, not separate aesthetic elements); see also Carol
Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985) (finding the claimed
aesthetic elements to be completely functional, incapable of being separated into a
copyrightable work of art).
187 See generally COMPENDIUM , supra note 106.

188 See COMPENDIUM, supra note 106.

189 See Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d 1211, 1219–20 (C.D. Cal. 2006)

(protecting a combination of lace trimming and embroidered design on a tunic).


190 Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1004 (2d Cir. 1995) (protecting the

arrangement of leaves and squirrels with colors and shadows on a sweater).


191 Jovani Fashion, Ltd. v. Cinderella Divine, Inc., 808 F. Supp. 2d 542, 549 (S.D.N.Y. 2011)
(failing to protect the compilation and arrangement of beads, sequins, and tulle used on a
prom dress).
192 See COMPENDIUM, supra note 106.
634 New England Law Review [Vol. 51|3

CONCLUSION

Copyright protections for fashion designs are possible if the courts


would follow the Copyright Office approach. This approach embodies
what a copyright should be by offering protection without creating
monopolies over the creation of the useful article itself. It best separates the
pictorial, graphic, or sculptural designs that can exist independently of the
functional features of the design. Designers spend so much creative energy
developing their designs, it is only fair that they receive the copyright
protections that accompany such creativity. The Varsity court is only the
most recent example of how confused the courts are concerning
separability. Congress or the Supreme Court must establish the superior
test for conceptual separability; the Copyright Office test is exactly the type
of test which can effectively, efficiently, and consistently protect proper
fashion designs while preventing monopolies on the creation of the useful
article in the shape of the clothing. “[F]ashion designer’s creations,
especially those pieces considered haute couture, are not meant to be worn
as everyday clothing, or even as once-in-a-lifetime clothing. They are
created as expressions of the designer’s creativity[.]” 193 As expressions of
creativity, fashion designs should not be barred entirely from copyright
protection, but should be given the same chance as other copyrightable
material to prove their originality and fixation in order to be considered
copyright eligible. By insisting that a separate artistic work be created, the
Copyright Office approach is faithful to the purpose of the Copyright
Act—which is to promote such creative works. Fashion is creative,
innovative, original, artistic, and expressive; all attributes of works strongly
protected by copyright. It is important to protect the designs of those who
provide such a significant artistic contribution to our public domain.

193 Mencken, supra note 124, at 5–6.