127
THE FEDERAL GOVERNMENT’S HAND-ME-DOWNS:
THE POSSIBILITY OF PROTECTING FASHION AT
THE STATE LEVEL
Brittany Lamb*
For decades, American fashion designers have been ﬁghting, to no
avail, for a federal law that protects their designs. In light of this inaction
at the federal level, this Note explores the possibility of making use
of the states’ traditional role as “laboratories of democracy” and passing
a state law protecting works of fashion, speciﬁcally garment designs.
However, this state law would need to overcome the hurdle of the federal
copyright-preemption test. After examining the relevant provisions of the
federal copyright statute and the preemption test in relation to garment
designs, this Note concludes that a state law protecting garment designs
could avoid copyright preemption and suggests that New York adopt
such a law.
INTRODUCTION
At a ﬂea market in Chelsea, Dana Foley met her future design partner,
Anna Corinna, while selling garments Foley made in her kitchen.1
At
the time, Foley, the mother of two children, was an aspiring playwright
living on the Lower East Side, and Corinna was working as a receptionist
at Trump Tower and selling vintage clothes at a ﬂea market to make ends
meet.2
“We both really loved each other’s aesthetics and had really great
followings at the ﬂea market,” Corinna said of their collaboration.3
“One
day, Dana said we should open a store and we did!”4
The fashion world
quickly took notice. In 2008, the pair, who had formed the label
Foley + Corinna, was invited to join the prestigious Council of Fashion
Designers of America.5
Now the brand is sold in stores such as Saks Fifth
Avenue, Neiman Marcus, Bloomingdale’s, and Nordstrom.6
Yet despite
its success in a competitive industry, Foley + Corinna does not have the
*. J.D. Candidate 2015, Columbia Law School.
1. Eric Wilson, Simply Irresistible, N.Y. Times (May 21, 2008), http://www.nytimes.
com/2008/05/21/business/smallbusiness/21look.html [hereinafter Wilson, Simply
Irresistible] (on ﬁle with the Columbia Law Review).
2. Id.
3. Rachel Bernstein, Foley + Corinna’s Anna Corinna Dishes on Brand Evolution
and Vintage Prowess, Daily Front Row (Mar. 18, 2013), http://fashionweekdaily.com/
foley-corinnas-anna-corinna-dishes-on-brand-evolution-and-vintage-prowess/ (on ﬁle with
the Columbia Law Review).
4. Id.
5. About F+C, Foley + Corinna, http://www.foleyandcorinna.com/index.php/aboutfc
(on ﬁle with the Columbia Law Review) (last visited Oct. 13, 2014).
6. Id.
128 COLUMBIA LAW REVIEW [Vol. 115:127
name recognition, high-proﬁle editorials, or runway shows of American
designers such as Michael Kors, Marc Jacobs, or Ralph Lauren.7
People
without knowledge of the industry may not have even heard of Foley +
Corinna.
Foley’s and Corinna’s eye for style and under-the-radar status make
them an ideal target for style piracy. Susan Scaﬁdi, an expert on fashion
law, explained this conundrum: “This is the downside of being successful
but relatively unknown . . . . If you bite a well-known brand, you get
caught very easily. If you bite a couple of sweet girls on the Lower East
Side, how many people will notice?”8
A few years ago, a woman spent
over $1,200 on silk dresses for her bridesmaids at a Foley + Corinna store.
Corinna received a phone call from one of her employees when the
dresses were returned. The woman had seen a polyester knockoff of the
dress, which was selling for almost a tenth of the price, in the window of a
fast-fashion clothing chain.9
When looking at a picture of the knockoff
and her original design, even Corinna could not immediately tell which
was which.10
“When one of our designs gets knocked off,” Corinna said
of the incident, “the dress is cheapened—customers won’t touch it.”11
While it is common to think knockoffs and fashion piracy only harm
large, faceless fashion brands—the Guccis, Chanels, and Pradas of the
world—this simply is not the case, as the Foley + Corinna episode demonstrates.
The fashion industry has been ﬁghting for protection of its
designs for decades to no avail.12
Thus far, advocates of protection largely
have fallen into two camps: those who believe existing federal
intellectual-property regimes can be used to protect works of fashion13
7. See Wilson, Simply Irresistible, supra note 1 (stating Foley + Corinna has “never
been prominently proﬁled in Vogue or Elle, nor have they sought the Bryant Park
runways”).
8. Id.
9. Maggie Overfelt, When Piracy Is Legal, CNNMoney (Apr. 28, 2008, 9:20 AM),
http://money.cnn.com/2008/04/23/smbusiness/whos_stealing_piracy_legal.fsb/ (on ﬁle
with the Columbia Law Review).
10. Ruth La Ferla, Faster Fashion, Cheaper Chic, N.Y. Times (May 10, 2007), http://
www.nytimes.com/2007/05/10/fashion/10FOREVER.html (on ﬁle with the Columbia Law
Review).
11. Overfelt, supra note 9.
12. See, e.g., Fashion Originators’ Guild of Am., Inc. v. FTC, 312 U.S. 457, 464–65
(1941) (ﬁnding fashion designers’ agreement among themselves to refuse to sell designs
to knockoff-selling retailers constituted unfair method of competition).
13. For arguments promoting the use of currently existing intellectual-property
regimes (i.e., trademark or trade dress, patent, or copyright) to protect works of fashion,
see, e.g., Elizabeth Ferrill & Tina Tanhehco, Protecting the Material World: The Role of
Design Patents in the Fashion Industry, 12 N.C. J.L. & Tech. 251, 277–98 (2011) (supporting
greater utilization of design patents to protect works of fashion); S. Priya Bharathi,
Comment, There Is More than One Way to Skin a Copycat: The Emergence of Trade
Dress to Combat Design Piracy of Fashion Works, 27 Tex. Tech L. Rev. 1667, 1691–94
(1996) (arguing trade dress is superior to copyright for protecting works of fashion); Peter
K. Schalestock, Comment, Forms of Redress for Design Piracy: How Victims Can Use
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 129
and those who think the best method would be for Congress to take
action on the issue.14
While a federal statute that explicitly protects fashion
would be a worthy solution, attempts to get such legislation through
Congress have failed time after time.15
The possibility of protecting works of fashion, speciﬁcally garment
designs, at the state level has not been widely considered, presumably
because advocates of protection assume such a state law would be
preempted by federal copyright law.16
This Note argues against this
assumption and contends that a state law extending protection to garment
designs would not necessarily run afoul of federal copyright. Part I
Existing Copyright Law, 21 Seattle U. L. Rev. 113, 128–29 (1997) (examining how copyright’s
separability doctrine can be interpreted to allow protection for works of fashion);
Sunila Sreepada, Comment, The New Black: Trademark Protection for Color Marks in the
Fashion Industry, 19 Fordham Intell. Prop. Media & Ent. L.J. 1131, 1159–68 (2009)
(supporting use of trademark to protect color marks in fashion industry).
14. For discussions on the need for Congress to pass legislation providing for the
protection of works of fashion, see, e.g., C. Scott Hemphill & Jeannie Suk, The Law,
Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147, 1184–90 (2009) (proposing
protection for original designs, but only from close copies); Anne Theodore Briggs,
Comment, Hung Out to Dry: Clothing Design Protection Pitfalls in United States Law, 24
Hastings Comm. & Ent. L.J. 169, 201–13 (2002) (discussing shortcomings of extant
intellectual-property regimes and arguing for legislation to protect garment design);
Laura C. Marshall, Note, Catwalk Copycats: Why Congress Should Adopt a Modiﬁed
Version of the Design Piracy Prohibition Act, 14 J. Intell. Prop. L. 305, 327–31 (2007)
(arguing for adoption of modiﬁed version of previously proposed fashion legislation);
Saﬁa A. Nurbhai, Note, Style Piracy Revisited, 10 J.L. & Pol’y 489, 515–23 (2002)
(suggesting Congress add section for fashion-design protection to Title 17 of U.S. Code);
Megan Williams, Comment, Fashioning a New Idea: How the Design Piracy Prohibition
Act Is a Reasonable Solution to the Fashion Design Problem, 10 Tul. J. Tech & Intell. Prop.
303, 311–18 (2007) (arguing for enactment of previously proposed fashion law).
15. See Casey E. Callahan, Note, Fashion Frustrated: Why the Innovative Design
Protection Act Is a Necessary Step in the Right Direction, but Not Quite Enough, 7 Brook.
J. Corp. Fin. & Com. L. 195, 203–04 (2012) (“The Design Piracy Prohibition Act (DPPA)
was introduced to Congress three times, once in 2006 and 2007, and again in 2009. The
bill never made it further than the House Committee on the Judiciary . . . .”); Jessica
Rosen, Comment, The Inability of Intellectual Property to Protect the New Fashion
Designer: Why the ID3PA Should Be Adopted, 43 Golden Gate U. L. Rev. 327, 346–47
(2013) (discussing failure of ID3PA and IDPA, two bills that would protect fashion); Press
Release, Office of Commc’ns & Pub. Affairs, Columbia Law Sch., A Lost Story of Fashion
Week (Aug. 26, 2013), http://www.law.columbia.edu/media_inquiries/news_events/2013
/august2013/hemphill-foga (on ﬁle with the Columbia Law Review) (“U.S. Senator Charles
E. Schumer (D-NY) introduced the Innovative Design Protection Act in 2012. The bill was
passed out of the Senate Judiciary Committee but never enacted and has yet to be introduced
in the 113th Congress.”).
16. On the other hand, a leading treatise on copyright law seems open to the
possibility that a state law protecting works of fashion could avoid preemption. See 1
Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 1.01(B)(2)(e) (Matthew
Bender rev. ed. 2014) [hereinafter Nimmer on Copyright] (“If such typeface designs
are . . . outside the realm of copyright protection, it may follow that federal pre-emption
does not extend to state laws extending comparable protection. In like manner, one can
analyze state-law protection touching on other borders of copyright protection (such as
dress designs).”).
130 COLUMBIA LAW REVIEW [Vol. 115:127
provides a general overview of the relevant provisions of the federal copyright
statute and how they apply to garment designs. Part II addresses the
copyright-preemption test and discusses whether one can consider garment
designs copyrightable subject matter and whether a state law would
extend a right comparable to one provided by federal copyright. Part III
concludes by considering what a state law protecting garment designs
would look like and suggests that New York implement such legislation.
Though the arguments of this Note could be expanded to include all
works of fashion (e.g., designs for garments, bags, shoes, and other accessories),
this Note focuses on protection for garment designs. Additionally,
this Note emphasizes statutory preemption under the federal copyright
statute, as opposed to preemption under the Supremacy Clause17
of
the Constitution.18
I. UNDERPINNINGS
In order to promote national uniformity in copyright,19
section 301
of the Copyright Act provides for the preemption of state laws and causes
of action that (1) speak to works that fall under the federal umbrella of
copyrightable subject matter and also (2) extend a right equivalent to
those provided exclusively by federal copyright.20
Therefore, in order for
a state law regulating garments to be preempted, garments must be
copyrightable subject matter and the law must provide a right comparable
to those available under federal copyright. If only one (or neither) of
these criteria is met, the law avoids preemption.21
A. Sections 102 and 103: What Is Copyrightable Subject Matter?
Section 301 of the Copyright Act explicitly disclaims preemption of
state laws addressing works that do not “come within the subject matter
17. See U.S. Const. art. VI, cl. 2 (stating Constitution and federal laws “shall be the
supreme Law of the Land; and the Judges in every State shall be bound thereby, any Thing
in the Constitution or Laws of any State to the Contrary notwithstanding”).
18. For a brief discussion of preemption under the Supremacy Clause, see infra notes
231–233 and accompanying text.
19. See H.R. Rep. No. 94-1476, at 129 (1976) (“By substituting a single Federal
system for the present anachronistic, uncertain, impractical, and highly complicated dual
system, the bill . . . would be much more effective in carrying out the basic constitutional
aims of uniformity and the promotion of writing and scholarship.”).
20. See 17 U.S.C. § 301(a) (2012) (preempting “all legal or equitable rights that are
equivalent to any of the exclusive rights within the general scope of copyright . . . in works
of authorship that are ﬁxed in a tangible medium of expression and come within the
subject matter of copyright”).
21. Cf. H.R. Rep. No. 94-1476, at 132 (“Section 301 is not intended to preempt
common law protection in cases involving activities such as false labeling, fraudulent
representation, and passing off even where the subject matter involved comes within the
scope of the copyright statute.”).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 131
of copyright as speciﬁed by sections 102 and 103.”22
Section 102 provides
the baseline requirements of copyright protection: originality and ﬁxa-
tion.23
Section 102 also sets out eight categories of copyrightable subject
matter: (1) literary works; (2) musical works; (3) dramatic works; (4)
pantomime and choreographic works; (5) pictorial, graphic, and sculptural
works; (6) audiovisual works; (7) sound recordings; and (8) architectural
works.24
This list was not meant to be exhaustive.25
Section 103
makes clear that compilations26
and derivative works27
are also copyrightable
subject matter.28
Of the enumerated categories in section 102, only
one appears to be relevant to garments: pictorial, graphic, and sculptural
(PGS) works.
1. PGS Works. — The category of PGS works encompasses “twodimensional
and three-dimensional works of ﬁne, graphic, and applied
art, photographs, prints and art reproduction, maps, globes, charts, diagrams,
models, and technical drawings, including architectural plans.”29
In this deﬁnition, garments would most likely qualify as “applied art,” a
term which refers to PGS works that are also useful articles,30
regardless
of whether they have been mass produced or marketed for commercial
22. 17 U.S.C. § 301(b)(1).
23. See id. § 102(a) (“Copyright protection subsists, in accordance with this title, in
original works of authorship ﬁxed in any tangible medium of expression, now known or
later-developed, from which they can be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device.”). The originality requirement
merely demands that the “work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some minimal degree
of creativity.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). The ﬁxation
requirement ensures that the work is “sufficiently permanent or stable to permit it to
be perceived, reproduced, otherwise communicated for a period of more than transitory
duration.” 17 U.S.C. § 101.
24. 17 U.S.C. § 102(a).
25. See id. § 102(a) (stating “[w]orks of authorship include the following categories”
(emphasis added)); see also id. § 101 (making clear “terms ‘including’ and ‘such as’ are
illustrative and not limitative”); H.R. Rep. No. 94-1476, at 53 (“The use of the word
‘include,’ as deﬁned in section 101, makes clear that the listing is ‘illustrative and not
limitative,’ and that the seven categories do not necessarily exhaust the scope of ‘original
works of authorship’ that the bill is intended to protect.”).
26. A compilation is a “work formed by the collection and assembling of preexisting
materials or of data that are selected, coordinated, or arranged in such a way that the
resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101.
27. A derivative work is a “work based upon one or more preexisting works, such as a
translation, musical arrangement, dramatization, ﬁctionalization, motion picture version,
sound recording, art reproduction, abridgment, condensation, or any other form in which
a work may be recast, transformed, or adapted.” Id.
28. See id. § 103(a) (“The subject matter of copyright as speciﬁed by section 102
includes compilations and derivative works.”).
29. Id. § 101.
30. See infra Part I.A.2 (discussing useful articles).
132 COLUMBIA LAW REVIEW [Vol. 115:127
purposes, or whether they may be eligible for design-patent protection.31
Another way to ﬁt garment designs into the PGS framework is to try to
pass them off as “soft sculptures,”32
though this subcategory generally
refers more to objects like plush toys and dolls.33
2. Useful Articles. — The deﬁnition of PGS works contains an important
caveat: If the work qualiﬁes as a useful article, its mechanical and
utilitarian aspects are not protectable.34
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.”35
This language is
fairly opaque. One court found that this meant a toy airplane was
copyrightable because its whole purpose was to portray the appearance
of a real airplane and, apart from this, it had no intrinsic utilitarian
function.36
Another court determined that Legos were functional, and
31. H.R. Rep. No. 94-1476, at 54 (1976); see also Mazer v. Stein, 347 U.S. 201, 217–18
(1954) (“Neither the Copyright Statute nor any other says that because a thing is
patentable it may not be copyrighted . . . . 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.”). The Copyright Act of 1976 was meant to
codify Mazer. See H.R. Rep. No. 94-1476, at 54 (“In accordance with [Mazer] works of
‘applied art’ encompass all original pictorial, graphic, and sculptural works that are
intended to be or have been embodied in useful articles, regardless of factors such as mass
production, commercial exploitation, and the potential availability of design patent
protection.”).
32. See Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455–56 (2d Cir.
1989) (“Whimsicality chose to classify its [costumes] as soft sculptures with no useful
function . . . . Unfortunately for Whimsicality here, the evidence demonstrates not only
that the costumes were not soft sculpture, but that Whimsicality knew full well that no
reasonable observer could believe that the costumes were soft sculpture.”); Nat’l Theme
Prods., Inc. v. Jerry B. Beck, Inc., 696 F. Supp. 1348, 1351 (S.D. Cal. 1988) (claiming
costume portraying dog is copyrightable as “soft sculpture”).
33. See Ty, Inc. v. Publ’ns Int’l Ltd., 292 F.3d 512, 523 (7th Cir. 2002) (mentioning
Ty’s Beanie Babies are copyrighted as soft sculptures); Kamar Int’l, Inc. v. Russ Berrie &
Co., 657 F.2d 1059, 1061 (9th Cir. 1981) (holding copyright for stuffed animals as soft
sculptures was valid); Ty, Inc. v. GMA Accessories, Inc., 959 F. Supp. 936, 938 (N.D. Ill.
1997) (“Ty manufactures ‘Squealer the Pig’ . . . and ‘Daisy the Cow’ . . . , soft-sculptured
‘bean bags’ which Ty sells as part of its ‘The Beanie Babies Collection’ . . . . Ty is the owner
of registered copyrights for both of those bean bags.”); Original Appalachian Artworks,
Inc. v. Yuil Int’l Trading Corp., 105 F.R.D. 113, 114 (S.D.N.Y. 1985) (“Plaintiff Original
Appalachian Artworks (‘OAA’) is the owner of the copyright to the enormously popular
‘Cabbage Patch Kids’ line of soft-sculpture dolls.”).
34. See 17 U.S.C. § 101 (“[PGS works] shall include works of artistic craftsmanship
insofar as their form but not their mechanical or utilitarian aspects are concerned.”).
35. Id.
36. Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). The overruled
district court had passionately taken the opposite stance:
The airplanes are toys. Toys are useful. A plane is a thing to play
with. Play is an integral part of growing up. Children need toys. A toy
airplane is useful and possesses utilitarian and functional characteristics
in that it permits a child to dream and to let his or her imagination
soar . . . . The basic elements employed in the overall design of the
defendant’s toy airplane are functional and utilitarian since they are
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 133
therefore not copyrightable, because a child could attach pieces to each
other and, “[w]hile moving and attaching are not the only functions of a
toy, they can be seen as utilitarian in a way that the capacity to inspire
play is not.”37
As evident from these examples, what constitutes a useful
article is still a gray area, likely due to the lack of clarity in the statutory
language.38
Garments clearly have both utilitarian and aesthetic features; clothes
cover the body and protect the wearer from the elements, but they are
also valued for their aesthetic appeal and used to express one’s individ-
uality.39
Garments thus appear to qualify as useful articles, albeit ones
with strong artistic overtones. But this does not automatically disqualify
garments from copyright protection. A useful article can gain copyright
protection if it passes the “separability test”: If some feature of a useful
article is separable from its utilitarian aspects, then that feature is
mandated by the overall shape required to simulate a real airplane.
Clearly, without question, the defendant’s toy airplane is both useful and
utilitarian.
Gay Toys, Inc. v. Buddy L Corp., 522 F. Supp. 622, 625 (E.D. Mich. 1981), vacated, 703 F.2d
970 (6th Cir. 1983).
37. Lego A/S v. Best-Lock Constr. Toys, Inc., 874 F. Supp. 2d 75, 98–99 (D. Conn.
2012).
38. See infra Part II.A.2 (discussing difficulty in applying deﬁnition of “useful article”
in context of garment designs).
39. See Jenna Marotta, Q&A: Simon Doonan on Why Stars Should Buy Their Gowns
for Awards Shows, N.Y. Mag.: The Cut (Jan. 14, 2014, 3:05 PM), http://nymag.com/thecut
/2014/01/simon-doonan-on-why-stars-should-buy-their-gowns.html (on ﬁle with the
Columbia Law Review) (“I think clothes and style are self-expression: If that’s what
someone’s wearing, they’re expressing themselves, and that’s who they are—you don’t
rush over and make them look different by cutting off their mullet.”). On the other hand,
in early 2014, the media caught wind of a new “trend” called “normcore”—a “self-aware,
stylized blandness” that is “a general attitude: embracing sameness deliberately as a new
way of being cool, rather than striving for ‘difference’ or ‘authenticity.’ In fashion, though,
this manifests itself in ardently ordinary clothes. Mall clothes. Blank clothes. The kind of
dad-brand non-style you might have once associated with Jerry Seinfeld . . . .” Fiona
Duncan, Normcore: Fashion for Those Who Realize They’re One in 7 Billion, N.Y. Mag.:
The Cut (Feb. 26, 2014, 8:00 AM), http://nymag.com/thecut/2014/02/normcore-fashiontrend.html
(on ﬁle with the Columbia Law Review); see also Graham Slaughter, Are You
Normcore—or Merely Unfashionable?, Toronto Star (Mar. 1, 2014), http://www.thestar
.com/life/fashion_style/2014/03/01/are_you_normcore_or_merely_unfashionable.html
(on ﬁle with the Columbia Law Review) (describing normcore as “[s]artorial tofu, tasteless
on purpose”); Simon Doonan, Beware of Normcore: The Bogus-Sounding New Fashion
Trend Is All Too Real, Slate (Apr. 7, 2014, 11:45 PM), http://www.slate.com/articles/life/
doonan/2014/04/normcore_the_new_fashion_trend_and_its_perils.html (on ﬁle with the
Columbia Law Review) (describing normcore as “dressing like . . . a bewildered Icelandic
exchange student circa 1984”). However, this is likely just “a rewind of the early 1990s,
when stonewashed jeans, big white sneakers, ill-ﬁtting baseball caps, turtlenecks and ﬂeece
jackets were the rage, and the socks-with-sandals look rocked . . . . [F]ashion trends
typically resurface in a 20-year cycle, making normcore’s arrival right on track.” Eun
Kyung Kim, Normcore: ‘Seinfeld’ Look Turns Bland into Fashion Trend, TODAY (Mar. 5,
2014, 9:59 AM), http://www.today.com/style/normcore-seinfeld-look-turns-bland-fashiontrend-2D79317923
(on ﬁle with the Columbia Law Review).
134 COLUMBIA LAW REVIEW [Vol. 115:127
protectable as a PGS work.40
The statutory language relating to the separability
test is even more enigmatic than the deﬁnition of “useful article”:
A useful article is a PGS work, and thus eligible for copyright protection,
“if, and only to the extent that, such 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.”41
If such a separable feature exists, only that feature is protected
and not the entire article.42
It is common to distinguish between conceptual separability (“can
be identiﬁed separately from”) and physical separability (“capable of
existing independently of”).43
The plain language of the statute seems to
imply that both conceptual and physical separability are required since
“and” is used instead of “or.” However, House Report 1476 suggests the
presence of either conceptual or physical separability would suffice:
“Unless the shape of an automobile, airplane, ladies’ dress, food processor,
television set, or any other industrial product contains some element
that, physically or conceptually, can be identiﬁed as separable from the
utilitarian aspects of that article, the design would not be copyrighted
under the bill.”44
This makes sense, since physical separability—which
exists “when a component of a useful article can actually be removed
from the original item and separately sold, without adversely impacting
the article’s functionality”45
—may be relatively straightforward when
applied to three-dimensional works but may not translate as well to twodimensional
works.46
Since the language was “intended to apply to twodimensional
material, it is clear that a physical separability test cannot be
the exclusive test for determining copyrightability.”47
40. See Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005)
(“[I]f a useful article incorporates a design element that is physically or conceptually
separable from the underlying product, the element is eligible for copyright protection.”).
41. 17 U.S.C. § 101 (2012).
42. H.R. Rep. No. 94-1476, at 55 (1976) (“[E]ven if the three-dimensional design
contains some such [separable] element . . . copyright protection would extend only to
that element, and would not cover the over-all conﬁguration of the utilitarian design as
such.”).
43. 17 U.S.C. § 101; see also Pivot Point Int’l, Inc. v. Charlene Prods., Inc., 372 F.3d
913, 932–33 (7th Cir. 2004) (Kanne, J., dissenting) (distinguishing between two types of
separability and identifying basic qualiﬁcations for each).
44. H.R. Rep. No. 94-1476, at 55 (emphasis added).
45. Chosun Int’l, 413 F.3d at 329.
46. See Pivot Point, 372 F.3d at 922 (“When a three-dimensional article is the focus of
the inquiry, reliance on physical separability can no doubt be a helpful tool . . . [but] such
an approach really is not of much use when the item in question is two-dimensional.”).
47. Id. Though the Seventh Circuit is perhaps correct that physical separability is
more difficult to grasp in the context of two-dimensional works, it seems possible for twodimensional
works to pass this test. For example, a stamp could be physically separated
from an envelope and displayed as a work of art in a museum. However, the Seventh
Circuit’s assertion that physical separability is not the sole test has been widely accepted.
See Leicester v. Warner Bros., 232 F.3d 1212, 1219 n.3 (9th Cir. 2000) (noting general
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 135
Physical separability may be an easier notion to grasp than conceptual
separability. For instance, a poodle pin attached to a skirt is physically
separable, because it can exist independently of the skirt and the
functionality of the skirt is not compromised by its absence.48
However,
physical separability would probably not be the avenue for protection for
the majority of garments. After all, what could someone physically
separate from a pair of pants while maintaining its functionality and
integrity as a pair of pants? For the vast majority of garments, the only
viable way to gain copyright protection is through the conceptualseparability
analysis. The many iterations of conceptual separability and
their concomitant capacity to perplex judges is discussed in further detail
in Part II.A.3.
B. Section 106: What Is an Equivalent Right?
A state law may also avoid preemption if it addresses “activities violating
legal or equitable rights that are not equivalent to any of the exclusive
rights within the general scope of copyright as speciﬁed by section
106.”49
Under section 106, the owner of a copyright is guaranteed ﬁve
exclusive rights: reproduction, preparation of derivative works (or adaptation),
distribution, performance, and display.50
A state law reaching
copyrightable subject matter would be preempted if it provided any of
these ﬁve rights, or their equivalents.
The exclusive right that seems most relevant to the fashion industry
is the right “to reproduce the copyrighted work in copies.”51
The copyrighted
work is infringed if the work is reproduced “in whole or in any
substantial part, and by duplicating it exactly or by imitation or simu-
lation.”52
If a garment managed to acquire copyright protection, it would
be directly protected from knockoffs by the right of reproduction. Thererecognition
of two kinds of separability, physical and conceptual); Brandir Int’l, Inc. v.
Cascade Pac. Lumber Co., 834 F.2d 1142, 1143–44 (2d Cir. 1987) (noting scholarly discussion
regarding conceptual and physical separability before concluding “‘[c]onceptual
separability’ is thus alive and well, at least in this circuit”); Lego A/S v. Best-Lock Constr.
Toys, 874 F. Supp. 2d 75, 95 (D. Conn. 2012) (“Because Lego does not assert physical
separability in support of the claim that its ﬁgurines contain copyrightable elements, the
case turns upon conceptual separability.”); Eliya, Inc. v. Kohl’s Dep’t Stores, No. 06 Civ
195(GEL), 2006 WL 2645196, at *11 (S.D.N.Y. Sept. 13, 2006) (“Separability comes in two
ﬂavors—physical separability and conceptual separability.”).
48. Look 8 of Isaac Mizrahi Fall 2011 Ready-to-Wear Collection, Style.com, http://
www.style.com/slideshows/fashion-shows/fall-2011-ready-to-wear/isaac-mizrahi/collection/8 (on
ﬁle with the Columbia Law Review) (last visited Oct. 13, 2014) (depicting skirt with poodle
pin attached).
49. 17 U.S.C. § 301(b)(3) (2012).
50. Id. § 106; see also H.R. Rep. No. 94-1476, at 61 (1976) (“The ﬁve fundamental
rights that the bill gives to copyright owners—the exclusive rights of reproduction, adaptation,
publication, performance, and display—are generally stated in section 106.”).
51. 17 U.S.C. § 106(1).
52. H.R. Rep. No. 94-1476, at 61.
136 COLUMBIA LAW REVIEW [Vol. 115:127
fore, if garments qualiﬁed as copyrightable subject matter, a state statute
extending a right to designers equivalent to federal copyright’s right of
reproduction would be preempted by section 301.
II. SKIRTING COPYRIGHT PREEMPTION
A state law will be preempted only if it addresses subject matter that
falls within the scope of federal copyright and extends a right comparable
to those provided by federal copyright.53
Part II.A discusses the ﬁrst
prong of the preemption test as it relates to garment designs—namely,
whether garments qualify as copyrightable subject matter. Part II.B then
discusses whether a state law that protects garment designs would provide
a right resembling one of those provided by federal copyright.
A. The Subject-Matter Requirement
Section 301 preempts state laws that address works that “come
within the subject matter of copyright.”54
Conversely, subject matter that
does not fall under the umbrella of copyrightable subject matter is fair
game for the states.55
Part II.A.1 discusses the fundamental question of
whether garments can ﬁt into the category of PGS works and examines
the various ways fashion designers have represented their creations in the
hopes of gaining copyright protection. Part II.A.2 then addresses
whether garments are useful articles, and Part II.A.3 determines whether
they would survive the separability test. As part of this analysis, this
section examines the various separability tests enunciated by courts and
determines how garment designs would fare under each.
1. Are Garments PGS Works? — It is undisputed that a sketch of a
garment design is eligible for copyright protection, but the copyright
only extends to the sketch itself and not the garment embodied in the
sketch.56
Similarly, fabric designs qualify as copyrightable subject matter.57
The design of a garment itself, however, has generally failed to meet the
requirements of copyrightability.58
A work of authorship must ﬁrst fall
53. See 17 U.S.C. § 301(a) (detailing scope of federal preemption); see also supra
Part I (discussing preemption test).
54. 17 U.S.C. § 301(b)(1).
55. See id. (leaving to states “subject matter that does not come within the subject
matter of copyright”).
56. See, e.g., Jack Adelman, Inc. v. Sonners & Gordon, Inc., 112 F. Supp. 187, 189–90
(S.D.N.Y. 1934) (holding valid copyright of drawing of garment does not give copyright
owner right to prevent others from manufacturing garment in drawing).
57. See Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., 169 F. Supp. 142, 143 (S.D.N.Y.
1959) (determining fabric design is copyrightable subject matter both as work of art and as
print).
58. See, e.g., Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir.
1989) (“We have long held that clothes, as useful articles, are not copyrightable.”);
Fashion Originators Guild of Am. v. FTC, 114 F.2d 80, 84 (2d Cir. 1940) (“It may be
unfortunate—it may indeed be unjust—that the law should not thereafter distinguish
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 137
into a category of copyrightable subject matter,59
and the best contender
for works of fashion is the category of pictorial, graphic, and sculptural
(PGS) works. In their attempts to make the copyright regime a ﬁt for protecting
their garments, designers have attempted to express their designs
in the PGS language.60
Designers often attempt to claim their garments are “soft sculp-
tures.”61
A soft sculpture would qualify as a PGS work; however, whether
garments are actually soft sculptures is another matter. In Whimsicality, Inc.
v. Rubie’s Costume Co., faced with a designer trying to pass his costumes off
as soft sculptures, the Second Circuit observed that the “word sculpture
implies a relatively ﬁrm form representing a particular concept” and
declined to expand the term to the costumes at issue.62
The designer had
managed to register the costumes with the Copyright Office as soft
sculptures, but the court considered this approach disingenuous.63
The
designer’s attorney was asked at trial what would have happened if
Whimsicality had been upfront about attempting to register a child’s
pumpkin costume, instead of claiming to register a soft sculpture, in the
application. The attorney admitted the application likely would have
been rejected.64
The Second Circuit thus invalidated the copyrights due
to misrepresentation.65
In a similar case, a designer attempted to characbetween
‘originals’ and copies; but until the Copyright Office can be induced to register
such designs as copyrightable under the existing statute, they both fall into the public
demesne without reserve.”), aff’d, 312 U.S. 457 (1941); Boyds Collection v. Bearington
Collection, Inc., 360 F. Supp. 2d 655, 661 (M.D. Pa. 2005) (“[The concept of useful
articles] has been universally interpreted to include all clothing, regardless of differences
in design, that may be worn by an individual to cover and protect his or her body.”); Jack
Adelman, 112 F. Supp. at 189 (quoting Register of Patents as saying “[t]here are no
provisions in the Copyright Law for protecting fashions for dresses” (internal quotation
mark omitted)). But see Aldridge v. Gap, Inc., 866 F. Supp. 312, 314–15 (N.D. Tex. 1994)
(“[A]lthough they fall within the subject matter of copyright regulation, clothes, as useful
articles are not copyrightable.”).
59. See 17 U.S.C. § 102 (listing requirements for copyrightable subject matter and
listing eight qualifying categories); see also supra Part I.A (discussing subject-matter
requirement).
60. See supra Part I.A.1 (discussing PGS works).
61. See supra notes 32–33 and accompanying text (discussing designers’ attempts to
pass garments off as “soft sculptures” in order to gain protection as PGS works).
62. 891 F.2d at 456.
63. See id. at 454–55 (“The explanation for this deception [(i.e., referring to the costumes
as “soft sculptures” in the application)] is not a mystery; the Copyright Office considers
costumes to be wearing apparel and consistently rejects applications to register
them.”).
64. Id. at 454.
65. Id. at 456 (“Whimsicality, because of its misrepresentation, does not have valid
copyrights capable of enforcement.”). However, on remand, the district court determined,
based on newly discovered evidence, that there was no misrepresentation. Whimsicality,
Inc. v. Rubie’s Costume Co., 836 F. Supp. 112, 120 (E.D.N.Y. 1993). An order clarifying this
decision granted the defendant’s motion to dismiss the copyright-infringement claim
based on the rationale of the original district-court decision. Whimsicality, Inc. v. Rubie’s
138 COLUMBIA LAW REVIEW [Vol. 115:127
terize his costumes as “wearable toys”66
and “soft sculptures,” arguing
that one of the costumes in question could be “stuffed and independently
displayed as a fanciful soft sculpture portraying a spotted puppy
dog.”67
In that case, the court was more sympathetic to the approach,
since the costumes were not “designed to optimize their function as
clothing.”68
The court pointed to the fact that some of the costumes
required garments to be worn underneath to avoid “risk[ing] indecent
exposure,” and other costumes did not allow the wearer to “move freely
or sit easily.”69
The Ninth Circuit, in Poe v. Missing Persons,70
also responded more
favorably to the “soft sculpture” approach, but not in a way that bodes
well for the majority of garment designs. Gregory Poe, an artist and
fashion designer, had created Aquatint No. 5, which he described
variously as “an artwork in the medium of soft sculpture,”71
“visual art,”72
“an artists [sic] impression or rendering of an article of clothing,”73
“a
work of conceptual art,”74
and “a three dimensional work of art in primarily
ﬂexible clear-vinyl and covered rock media.”75
The defendants
maintained that it was simply a swimsuit.76
Poe had lent Aquatint No. 5 to
a photographer for use in her portfolio, but it instead appeared on an
album cover without Poe’s consent.77
The district court granted the
defendants’ motion for summary judgment “because the functional
aspects of the swimsuit [were] not independent of the alleged
Costume Co., No. 89-CV-1720 (RJD), 1993 WL 661161, at *1 (E.D.N.Y. Dec. 6, 1993). The
original district-court decision had determined that the costumes were useful articles and
failed to pass the separability test, and were therefore not copyrightable. Whimsicality, Inc.
v. Rubie’s Costume Co., 721 F. Supp. 1566, 1575–76 (E.D.N.Y.), aff’d in part, vacated in
part, 891 F.2d 452 (2d Cir. 1989).
66. Nat’l Theme Prods., Inc. v. Jerry B. Beck, Inc., 696 F. Supp. 1348, 1350 (S.D. Cal.
1988) (“The Rabbit In Hat costume was designed and is marketed by NTP as a novelty
item intended exclusively as a wearable toy for masquerade purposes to portray the magic
trick of a rabbit being drawn out of a hat.”). For a discussion of whether toys, wearable or
not, are useful articles, see supra notes 36–37 and accompanying text.
67. Nat’l Theme Prods., 696 F. Supp. at 1351.
68. Id. at 1353.
69. Id.
70. 745 F.2d 1238 (9th Cir. 1984).
71. Id. at 1239.
72. Id.
73. Id. at 1240.
74. Id.
75. Id. (quoting plaintiff’s copyright application) (internal quotation marks
omitted).
76. See id. at 1239 (“Appellees moved for a summary judgment claiming that ‘the
critical facts in this case are not in dispute. There is no dispute that plaintiff designed the
swimsuit.’”).
77. Id. at 1240.
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 139
sculptural/artistic aspects of the suit,” thus rendering the work in
question uncopyrightable.78
The Ninth Circuit reversed the order of summary judgment, ﬁnding
there was a disputed issue of material fact regarding whether the work
was a useful article. The Ninth Circuit was at a loss to determine this
question as a matter of law:
Nothing in our legal training qualiﬁes us to determine as a
matter of law whether Aquatint No. 5 can be worn as an article
of clothing for swimming or any other utilitarian purpose. We
are also unable to determine merely by looking at Poe’s
creation whether a person wearing this object can move, walk,
swim, sit, stand, or lie down without unwelcome or unintended
exposure.79
The Ninth Circuit seemed to imply that the ability to perform activities
typically associated with swimsuits without risk of indecent exposure
while wearing the work would disqualify it from protection. The court
also noted that it appeared that Poe just wanted to “create a work of art
which portrayed an article of clothing,” but it was an open question
whether he also “created an article of clothing which can function as a
swimsuit.”80
According to the Ninth Circuit, it seems as though copyright
protection might come at the cost of sacriﬁcing wearability. For example,
while this may allow protection for an Alexander McQueen gown made
entirely of razor-clam shells and displayed at the Metropolitan Museum
of Art,81
it would not allow protection for an actually salable and wearable
Diane von Furstenberg shift dress, of which Forever 21 made an identical
copy and sold for a tenth of the price.82
Under this approach, the
garments that are least likely to be copied would be protectable, but
78. Id. at 1241.
79. Id. at 1242.
80. Id.
81. Dress, VOSS, Spring/Summer 2001, Metro. Museum of Art, http://blog.met
museum.org/alexandermcqueen/dress-voss-2/ (on ﬁle with the Columbia Law Review) (last
visited Oct. 13, 2014) (depicting dress made of razor shells designed by Alexander
McQueen displayed as part of “Savage Beauty” exhibition at Metropolitan Museum of
Art).
82. A few years ago, Forever 21 released a knockoff (called the “Sabrina” dress) of
the “Cerisier” dress by Diane von Furstenberg. See Susan Scaﬁdi, Seeing Double?,
Counterfeit Chic (Mar. 29, 2007, 12:52 PM), http://www.counterfeitchic.com/2007/03/
seeing_double.php (on ﬁle with the Columbia Law Review) (depicting Diane von
Furstenberg “Cerisier” dress and indistinguishable Forever 21 knockoff “Sabrina” dress).
While the Diane von Furstenberg original was priced at $325, the knockoff sold for $32.
Danica Lo, Designer Sues, N.Y. Post (Mar. 29, 2007, 9:00 AM), http://nypost.com/2007/03
/29/designer-sues/ (on ﬁle with the Columbia Law Review). This drastic discrepancy in
price “likely has to do with the premium put on a designer name, product development
on the part of von Furstenberg, the manufacturing conditions and the quality of the
material.” Id.
140 COLUMBIA LAW REVIEW [Vol. 115:127
those that are most likely to be copied would not.83
This would be counterintuitive
and rather ineffective, since copyright ideally should be aimed
at protecting works that are actually vulnerable to copying.
All of this reveals that the statutory language deﬁning PGS works
does not easily apply to garments. Garments could potentially qualify as
soft sculptures, works of three-dimensional art, or works of applied art,
but, as Poe demonstrated, there is another barrier that the designer must
overcome: the useful-articles doctrine.
2. Are Garments Useful Articles? — Copyright preemption does not
apply to state statutes that address useful articles,84
which do not qualify
for copyright protection. Therefore, if garments are useful articles, a
state law that protects them would avoid preemption, even if the law
extends a right equivalent to one of those provided by federal copyright.
At least one court has rejected preemption arguments with regard to several
state-law claims (such as unjust-enrichment and unfair-competition
claims) involving garments, ﬁnding the swimwear in question was a useful
article and thus beyond the reach of copyright preemption.85
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.”86
Importantly, the deﬁnition reaches articles “having an
intrinsic utilitarian function,” not just articles having a solely intrinsic
utilitarian function.87
Courts have addressed what exactly is the intrinsic
utilitarian function of human clothing in cases that deal with the copyrightability
of dolls’ clothing. In Mattel, Inc. v. MGA Entertainment, Inc.,
the Ninth Circuit addressed this issue in a dispute between the creator of
83. An exception to this is a relatively unsalable and unwearable Alexander McQueen
look. See Look 45 of Alexander McQueen Spring 2010 Ready-to-Wear Collection,
Style.com, http://www.style.com/slideshows/fashion-shows/spring-2010-ready-to-wear/
alexander-mcqueen/collection/45 (on ﬁle with the Columbia Law Review) (last visited Oct.
11, 2014). A near replica was made and modeled by Yara Soﬁa, a drag queen and contestant
on the reality-TV competition RuPaul’s Drag Race. See RuPaul’s Drag Race: Queens in
Space, at 23:41 (LOGO television broadcast Jan. 31, 2011) (depicting Yara Soﬁa modeling
her “best futurama glamorama,” which bears striking resemblance to Alexander McQueen
look, on main stage of RuPaul’s Drag Race).
84. See, e.g., H2O Swimwear, Ltd. v. Lomas, 560 N.Y.S.2d 19, 21 (App. Div. 1990)
(“The preemption provision does not, however, apply to ‘useful articles.’”).
85. Id. at 20–21 (“[I]t was error for the IAS Part to have granted defendants’ motions
to dismiss several causes of action on grounds of Copyright Act preemption and these
claims are, accordingly, reinstated.”).
86. 17 U.S.C. § 101 (2012); see also supra Part I.A.2 (discussing useful articles).
87. See Esquire, Inc. v. Ringer, 591 F.2d 796, 804 (D.C. Cir. 1978) (“Congress may
have concluded that literal application of the phrase ‘sole intrinsic function’ would create
an unworkable standard. For as one commentator has observed, ‘[t]here are no twodimensional
works and few three-dimensional objects whose design is absolutely dictated
by utilitarian considerations.’” (alteration in original) (quoting Comment, Copyright
Protection for Mass-Produced, Commercial Products: A Review of the Developments
Following Mazer v. Stein, 38 U. Chi. L. Rev. 807, 812 (1971))).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 141
the Barbie doll and the creator of the Bratz doll.88
The court determined
that doll clothing, unlike actual clothing, could be copyrighted: “Human
clothing is considered utilitarian and unprotectable. However, articles
that are intended only to portray the appearance of clothing are
protectable. Dolls don’t feel cold or worry about modesty. The fashions
they wear have no utilitarian function.”89
Similarly, in a case that discussed
clothing worn by teddy bears, a district court distinguished between
human clothes and dolls’ clothes:
The clothing on a teddy bear obviously has no utilitarian
function. It is not intended to cover embarrassing anatomical
aspects or to protect the bear from exterior elements. Rather, it
is intended and serves only to modify the appearance of the
bear, to give the doll a different “look and feel” from others.
Clothing on a bear replicates the form but not the function of
clothing on a person. It does not constitute a “useful article”
excluded from copyright protection.90
From these cases, it can be concluded that two of the “intrinsic utilitarian
functions” of human clothing are to protect the wearer from the elements
and to “cover embarrassing anatomical aspects.”91
The court in
Whimsicality also mentioned the “decorative function” of clothing.92
With
these intrinsic utilitarian functions, it is highly unlikely that a garment
could qualify as anything but a useful article. Most garments that are
vulnerable to design piracy—meaning they are salable—at a minimum
will take into account basic modesty concerns and will protect the wearer
from the elements to some degree. Furthermore, if the decorative function
of clothing counts as an intrinsic utilitarian function, even the most
over-the-top avant garde looks that are far closer to the “art” side of the
spectrum than the “utility” side would be useful articles.93
3. Do Garments Pass the Separability Test? — Even as a useful article, an
individual garment could still qualify for copyright protection if elements
of the design pass the separability test: “[T]he design of a useful arti-
88. See 616 F.3d 904, 907 (9th Cir. 2010) (“2001 saw the introduction of Bratz, ‘The
Girls With a Passion for Fashion!’ Unlike the relatively demure Barbie, the urban, multiethnic
and trendy Bratz dolls have attitude. This spunk struck a chord, and Bratz became
an overnight success. Mattel, which produces Barbie, didn’t relish the competition.”).
89. Id. at 916 n.12 (citations omitted).
90. Boyds Collection, Ltd. v. Bearington Collection, Inc., 360 F. Supp. 2d 655, 661
(M.D. Pa. 2005) (footnote omitted).
91. Id.
92. See Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989)
(“While the pictorial, graphic and sculptural aspects of useful articles may be copyrightable
if they are separable from the article . . . clothes are particularly unlikely to meet that
test—the very decorative elements that stand out being intrinsic to the decorative function
of the clothing.”).
93. If the Whimsicality court is really serious about clothing’s “decorative function,”
one could argue that art traditionally conceived would also serve a “decorative function”
and would thus be a useful article.
142 COLUMBIA LAW REVIEW [Vol. 115:127
cle . . . shall be considered a pictorial, graphic, or sculptural work only if,
and only to the extent that, such 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.”94
This
language is notoriously difficult to apply.95
This section examines how
various courts have grappled with the statutory language of separability
and how garment designs would fare under each version of the separability
test.
a. The Second Circuit.
i. The Kieselstein-Cord Test. — The Second Circuit ﬁrst addressed
the separability issue in Kieselstein-Cord v. Accessories by Pearl, Inc.96
The
case involved belt buckles that were “sculptured designs cast in precious
metals—decorative in nature and used as jewelry is, principally for
ornamentation.”97
The designs in question—the Winchester and the
Vaquero98
—had been registered with the Copyright Office as sculptures
and had sold quite successfully.99
The designer was even inducted into
the Council of Fashion Designers of America, and the buckles were
accepted into the permanent collection of the Metropolitan Museum of
Art.100
The defendant admitted to copying the designs but claimed they
were not copyrightable as they were useful articles.101
The Second Circuit
therefore had to determine whether any element of the buckles was
conceptually or physically separable from its utilitarian aspects.102
The
court asserted that conceptual separability existed and that the buckles
were therefore eligible for copyright protection: “We see in appellant’s
belt buckles conceptually separable sculptural elements, as apparently
have the buckles’ wearers who have used them as ornamentation for
parts of the body other than the waist. The primary ornamental aspect of
the Vaquero and Winchester buckles is conceptually separable from their
subsidiary utilitarian function.”103
If a test can be gleaned from this
rather conclusory statement, it would likely involve a determination of
whether the utilitarian function of the article is secondary to and
94. 17 U.S.C. § 101 (2012) (emphasis added).
95. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670 (3d Cir.
1990) (“Courts have twisted themselves into knots trying to create a test to effectively
ascertain whether the artistic aspects of a useful article can be identiﬁed separately from
and exist independently of the article’s utilitarian function.”).
96. 632 F.2d 989 (2d Cir. 1980).
97. Id. at 990.
98. No Copyright Love for Fashion?, Haute-Law.com (Feb. 24, 2012), http://hautelaw.com/2012/02/24/no-copyright-love-for-fashion/
(on ﬁle with the Columbia Law Review)
(depicting belt buckles in question).
99. Kieselstein-Cord, 632 F.2d at 990–91.
100. Id. at 991.
101. Id. at 991–92.
102. Id. at 993.
103. Id.
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 143
separate from the primary ornamental purpose of the article. The court
provided little guidance on how to make this determination.
Since the Kieselstein-Cord court did not lay out the rationale behind
its test, it is not clear how it would work in the context of garment
designs. How can one tell, ﬁrst, if the ornamental aspects of a garment
supersede the utilitarian aspects and, second, if the ornamental aspects
are separate from the utilitarian aspects? At the very least, it seems that
an avant garde garment that is more at home in a museum than on the
streets would be primarily ornamental, and a plain white T-shirt would be
primarily utilitarian. But this does not aid in the analysis, since the vast
majority of clothing that designers would want to protect lies somewhere
between these two extremes. The Kieselstein-Cord court did not provide
any guidance as to where exactly the line falls.
ii. The Carol Barnhart Test. — Luckily, the Second Circuit addressed
the separability issue again just a few years later in Carol Barnhart Inc. v.
Economy Cover Corp.,104
which considered the copyrightability of mannequins.
The mannequins in question were “life-like and anatomically accurate”
partial male and female torsos with “hollow backs designed to hold
excess fabric when the garment is ﬁtted onto the form.”105
After a lengthy
discussion of the relevant legislative history, the court concluded that the
mannequins failed to satisfy the separability test and were not copyright-
able.106
As in Kieselstein-Cord, the Second Circuit declined to provide an
explicit test, but the Carol Barnhart court elaborated on how one would
conduct this analysis while distinguishing the facts from those in
Kieselstein-Cord. The court emphasized that the ornamental features of
the belt buckles in Kieselstein-Cord “were not in any respect required by
their utilitarian functions; the artistic and aesthetic features could thus
be conceived of as having been added to, or superimposed upon, an
otherwise utilitarian article. The unique artistic design was wholly unnecessary
to performance of the utilitarian function.”107
With the mannequins,
however, the features that were allegedly ornamental were “inextricably
intertwined with the utilitarian feature, the display of clothes.”108
The Carol Barnhart test appears to involve a determination of
whether and to what extent the ornamental aspects of an article are
required by its utilitarian function. Again, it is unclear how this would
work in the context of fashion. A garment could deﬁnitely contain
aesthetic features that are “wholly unnecessary” to its utilitarian function.
104. 773 F.2d 411 (2d Cir. 1985).
105. Id. at 412.
106. See id. at 418 (“[W]e are persuaded that since the aesthetic and artistic features
of the Barnhart forms are inseparable from the forms’ use as utilitarian articles the forms
are not copyrightable.”).
107. Id. at 419.
108. Id.
144 COLUMBIA LAW REVIEW [Vol. 115:127
For example, the fringe on a skirt109
could be seen as a purely aesthetic
feature “superimposed upon[] an otherwise utilitarian article.”110
But is
the fringe “inextricably intertwined” with the utilitarian function of the
skirt, i.e., covering the body and protecting against the elements?111
Though it may do so in an aesthetically pleasing manner, the fringe on
the skirt, at the very least, still serves the intrinsic utilitarian function of
covering “embarrassing anatomical aspects.”112
iii. The Carol Barnhart Dissent. — In his Carol Barnhart dissent, Judge
Newman quickly addressed and disposed of four possible tests113
before
proposing a new one: In order to be conceptually separable, “the article
must stimulate in the mind of the beholder a concept that is separate
from the concept evoked by its utilitarian function.”114
This test is performed
from the perspective of the ordinary observer.115
Though the
majority claimed this test “uses as its yardstick a standard so ethereal as to
amount to a ‘non-test’ that would be extremely difficult, if not impossible,
to administer or apply,”116
Judge Newman at least attempted to give
some guidance for how his test would operate. He began by deﬁning
“separateness” to mean that the “design creates in the mind of the ordinary
observer two different concepts that are not inevitably entertained
simultaneously.”117
Therefore, an article is conceptually separable when a
person can displace from her mind the idea of the utilitarian function of
the object and focus exclusively on the nonutilitarian aspects of the
object, usually by conceiving of it as a work of art.118
109. See Look 10 of Michael Kors Fall 2014 Ready-to-Wear Collection, Style.com,
http://www.style.com/slideshows/fashion-shows/fall-2014-ready-to-wear/michael-kors/
collection/10 (on ﬁle with the Columbia Law Review) (last visited Oct. 11, 2014) (depicting
fringe skirt).
110. Carol Barnhart, 773 F.2d at 419.
111. And this does not even get into the Whimsicality court’s proposed “decorative
function,” which would likely eviscerate any chance this skirt had at copyright protection.
Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989); see supra notes
92–93 (discussing Whimsicality court’s inexplicable reference to “decorative function” of
clothing).
112. Boyds Collection, Ltd. v. Bearington Collection, Inc., 360 F. Supp. 2d 655, 661
(M.D. Pa. 2005); see supra text accompanying note 90 (discussing intrinsic utilitarian functions
of clothing in context of clothing for teddy bears).
113. See Carol Barnhart, 773 F.2d at 421–22 (Newman, J., dissenting) (discussing four
iterations of conceptual-separability test and rejecting each).
114. Id. at 422.
115. See id. (“I think the relevant beholder must be that most useful legal personage—the
ordinary, reasonable observer. This is the same person the law enlists to decide
other conceptual issues in copyright law, such as whether an allegedly infringing work
bears a substantial similarity to a copyrighted work.”).
116. Id. at 419 n.5 (majority opinion).
117. Id. at 422 (Newman, J., dissenting).
118. See id. at 422–23 (“[Conceptual separability] also occur[s] even when the
utilitarian function is perceived by observation, . . . if the concept of the utilitarian function
can be displaced in the observer’s mind while he entertains the separate concept of
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 145
This version of the separability test seems to operate somewhat like
an optical illusion. To take the example of the famous goblet optical illu-
sion,119
a person can look at the picture and see only a goblet. With a
slight change in focus, she will see the proﬁles of two faces in the exact
same picture. Thus, when looking at the exact same thing, she is capable
of conceiving of two different things separately and exclusively in her
mind: a goblet and a pair of faces. Judge Newman also provided several
considerations to weigh when performing this test: “the fact that an
object has been displayed or used apart from its utilitarian function, the
extent of such display or use, and whether such display or use resulted
from purchases,” along with the use of expert opinion and survey
results.120
It would likely be incredibly difficult for a garment to pass Judge
Newman’s version of the separability test. The ordinary observer would
need to be able to view the garment and conceive of it in her mind as a
work of art without at the same time conceiving of it as a functional
garment. Even if she perceives it as a work of art, if this conception is
“engendered in the observer’s mind simultaneously with the concept of
the article’s utilitarian function, the requisite ‘separateness’ does not
exist.”121
Though someone may view an eccentrically structured dress
made entirely out of duck feathers at the Metropolitan Museum of Art as
a work of art,122
it is still difficult to conceive of it as anything but a highly
artistic, outré dress. Even if a garment like this could pass Judge
Newman’s version of the conceptual-separability test, the vast majority of
garments, and particularly the ones that are most vulnerable to being
knocked off, would still be ineligible for protection as useful articles.
iv. The Brandir Test. — The Second Circuit’s discussion of conceptual
separability culminated in a third decision: Brandir International, Inc. v.
Cascade Paciﬁc Lumber Co., which addressed the copyrightability of the
RIBBON Rack, a bicycle rack that was adapted from a sculpture.123
In
Brandir, the court adopted Professor Denicola’s test for conceptual sepa-
rability:124
“[I]f design elements reﬂect a merger of aesthetic and funcsome
non-utilitarian function. The separate concept will normally be that of a work of
art.”).
119. Eric W. Weisstein, Goblet Illusion, Wolfram MathWorld, http://mathworld.
wolfram.com/GobletIllusion.html (on ﬁle with the Columbia Law Review) (last visited Oct.
11, 2014) (depicting illusion).
120. Carol Barnhart, 773 F.2d at 423.
121. Id. at 422.
122. See Dress, The Horn of Plenty, Autumn/Winter 2009–10, Metro. Museum of Art,
http://blog.metmuseum.org/alexandermcqueen/dress-horn-of-plenty/ (on ﬁle with the
Columbia Law Review) (last visited Oct. 13, 2014) (showing duck-feather dress designed by
Alexander McQueen that was part of “Savage Beauty” exhibition at Metropolitan Museum
of Art).
123. 834 F.2d 1142, 1143 (2d Cir. 1987).
124. See Robert C. Denicola, Applied Art and Industrial Design: A Suggested
Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707, 741 (1983) (“[C]opyright-
146 COLUMBIA LAW REVIEW [Vol. 115:127
tional considerations, the artistic aspects of a work cannot be said to be
conceptually separable . . . . Conversely, where the design elements can
be identiﬁed as reﬂecting the designer’s artistic judgment exercised
independently of functional inﬂuences, conceptual separability exists.”125
Therefore, whether an article is copyrightable turns on the extent to
which aesthetic elements are “signiﬁcantly inﬂuenced” by functional
concerns.126
The Second Circuit favored this version of the test for multiple
reasons. First, the test could be reconciled with the court’s previous decisions
in Kieselstein-Cord and Carol Barnhart.127
According to the court, the
ornamental elements of the belt buckles in Kieselstein-Cord “reﬂected
purely aesthetic choices, independent of the buckles’ function,” yet the
distinctive elements of the mannequins in Carol Barnhart “showed clearly
the inﬂuence of functional concerns.”128
Second, the court appreciated
how the test emphasized the emergence of utilitarian concerns during
the design process, proof of which would require information regarding
how the article was designed.129
Third, the court believed this test would
be relatively straightforward to apply.130
Indeed, the Brandir test is much easier to grasp and administer than
the two previous tests articulated by the Second Circuit, but garment
designs would still likely fail this test. For most garments, aesthetic
concerns are merged with utilitarian concerns. For example, designers
incorporate zippers and buttons to help the wearer get in and out of the
garment, straps to hold it up, lining to make it more comfortable or less
transparent, elasticity in the fabric to make it more wearable, or seaming
to make it more ﬂattering to the body.131
Very few garments reﬂect the
“designer’s artistic judgment exercised independently of functional inﬂu-
ences,”132
and, again, the ones that do reﬂect the designer’s pure artistic
judgment are not the garments that are likely to be copied by design
pirates.
ability ultimately should depend on the extent to which the work reﬂects artistic expression
uninhibited by functional considerations.”).
125. Brandir, 834 F.2d at 1145.
126. Id. at 1145–46.
127. Id. at 1145.
128. Id.
129. See id. (“[T]he test’s emphasis on the inﬂuence of utilitarian concerns in the
design process may help, as Denicola notes, to ‘alleviate the de facto discrimination
against non-representational art that has regrettably inﬂuenced much of the current
analysis.’” (quoting Denicola, supra note 124, at 745)).
130. See id. (“[W]e think Denicola’s test will not be too difficult to administer in
practice.”).
131. Cf. id. at 1146–47 (describing functional concerns that went into design process
of RIBBON Rack).
132. Id. at 1145.
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 147
b. The Seventh Circuit: Pivot Point. — Pivot Point International, Inc. v.
Charlene Products, Inc., a Seventh Circuit case, also addressed the
copyrightability of mannequins.133
This time the subject was “Mara,” a
mannequin of a human head that was used by hairstylists and imitated
the “hungry look” of runway models.134
Leo Passage, a celebrated hair
designer, enlisted the help of a German artist, Horst Heerlein, to create
the original Mara sculpture.135
The mold of this sculpture was then sent
to Hong Kong, where it was used to create polyvinyl chloride replicas.136
Following the commercial success of plaintiff’s Mara mannequin, the
defendant began marketing “Liza,” a mannequin head that bore a striking
resemblance to Mara.137
The Seventh Circuit looked to the Second Circuit’s analysis of the
separability issue for guidance138
before ultimately determining that Mara
was copyrightable.139
The Seventh Circuit noted with approval the
Second Circuit’s increased focus on the design process of the article in its
separability analysis140
and purported to use this approach to conclude
the Mara face was copyrightable: “Applying this test to the Mara
mannequin, we must conclude that the Mara face is subject to copyright
protection. It certainly is not difficult to conceptualize a human face,
independent of Mara’s speciﬁc facial features . . . that would serve the
utilitarian functions of a hair stand . . . .”141
This approach is somewhat
perplexing. If the test is whether it is possible to conceive of a different
design that would serve the same utilitarian functions, it seems as though
nearly every useful article would be copyrightable, as it is almost always
possible to conceive of a different design that serves the same purposes.
As the Pivot Point dissent noted, “If copyright provided protection for
functional items simply because of their aesthetic qualities, Congress’s
policy choice that gives less protection in patent than copyright would be
undermined.”142
133. 372 F.3d 913, 915 (7th Cir. 2004).
134. Id.
135. Id.
136. Id.
137. Id. at 915–16.
138. See id. at 924–30 (discussing, among others, Second Circuit opinions in
Kieselstein-Cord, Carol Barnhart, and Brandir).
139. See id. at 932 (“Thus, because Mara was the product of a creative process unfettered
by functional concerns, its sculptural features ‘can be identiﬁed separately from, and
are capable of existing independently of,’ its utilitarian aspects. It therefore meets the
requirements for conceptual separability and is subject to copyright protection.”).
140. See id. at 930 (“This process-oriented approach for conceptual separability—
focusing on the process of creating the object to determine whether it is entitled to
copyright protection—is more fully articulated in Brandir and indeed reconciles the
earlier case law pertaining to conceptual separability.”).
141. Id. at 931.
142. Id. at 932 (Kanne, J., dissenting).
148 COLUMBIA LAW REVIEW [Vol. 115:127
The Pivot Point dissent believed Mara was clearly a useful article that
failed to meet the separability test, since her facial features were essential
to her function as a teaching device at beauty schools.143
Furthermore,
the dissent did not think the emphasis on the design process had any
basis in the statutory language, which “looks to the useful article as it
exists, not to how it was created.”144
Even if one were to take into account
the design process, Pivot Point, the dissent pointed out, intended for
Mara to be used for a functional purpose from the beginning and enlisted
Heerlein to create her for that functional purpose.145
The upshot of Pivot Point for works of fashion is unclear. If the court
meant merely to adopt the Second Circuit’s analysis, then garment
designs will likely fail to satisfy the separability test.146
If the test is
whether it is possible to conceive of a different design that would serve
the same utilitarian concerns, nearly all garment designs would qualify as
conceptually separable. However, Pivot Point still makes clear that the
design process is important to the analysis.147
Since fashion designers
typically have in mind a combination of aesthetic and functional concerns
when they are designing garments, garment designs would likely
still fail to meet the Pivot Point articulation of the test. It would be a rare
situation where a designer was completely unhampered by functional
considerations, as the court believed Heerlein to have been.148
c. The Fifth Circuit: Harrah’s. — In Galiano v. Harrah’s Operating Co.,
the Fifth Circuit addressed the issue of conceptual separability in the
context of garment designs, speciﬁcally casino uniforms.149
Jane Galiano
entered into an agreement with Harrah’s to design uniforms for its casino
employees.150
Nearly a year later, negotiations to extend the contract
fell through, but Harrah’s continued to order from the manufacturers
the uniforms Galiano had designed.151
Galiano then sued, claiming
143. See id. at 933 (“[S]tudents style her hair and apply makeup as realistic training
for such pursuits on live subjects. A mannequin head without a neck, or with different eyes
and musculature, would not serve the utilitarian purpose of applying makeup or teaching
the art of matching hair styles to facial features.”).
144. Id. at 934.
145. Id. (“Even if we . . . look at the ‘process’ that led to the creation of Mara, it is
undeniable that, from the beginning, Pivot Point intended Mara to serve a functional
purpose and commissioned her creation to fulﬁll that purpose (not to create a work of art
for aesthetic beauty).”).
146. See supra text accompanying notes 131–132 (discussing how garment designs
would fare under Brandir test).
147. Pivot Point, 372 F.3d at 931–32 (discussing design process of Mara).
148. See id. at 931–32 (“[T]here is no evidence that Heerlein’s artistic judgment was
constrained by functional considerations.”).
149. See 416 F.3d 411, 413, 416 (5th Cir. 2005) (discussing statutory test for separability
as applied to “uniforms for employees of various Harrah’s casinos”).
150. Id. at 413.
151. Id.
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 149
Harrah’s had infringed her copyright on the garments152
by continuing
to use and order the garments.153
The Fifth Circuit ﬁrst considered the Pivot Point test and made clear
that it was not outright rejecting the test, but declined to apply it to the
facts at hand.154
The court then turned to two cases that had addressed
the copyrightability of works of fashion: Poe v. Missing Persons155
and
Kieselstein-Cord.156
The Fifth Circuit believed both of these decisions
showed that a “willingness to recognize the copyrightability of a useful
article seems, at some elemental level, to turn on the capacity of the item
to moonlight as a piece of marketable artwork.”157
After declaring that “a
sub-optimal prophylactic rule” is occasionally better than a “theoretically
superior but hopelessly subjective one,”158
the Fifth Circuit adopted what
it referred to both as the “Nimmer/Poe” standard and the “likelihood-ofmarketability
standard,” but only for garment designs.159
Since Galiano
had not shown that her designs were marketable apart from their utilitarian
purpose of casino uniforms, the garments were not copyrightable.160
Since the Fifth Circuit’s test was tailor-made, as it were, for garment
designs, it is much more straightforward to apply to garments. But this
does not mean garment designs fare any better under this test. In order
to be eligible for protection, a garment must be marketable apart from its
utilitarian functions. This would mean, under the Fifth Circuit’s test, that
a signiﬁcant number of people would be willing to purchase it purely for
its aesthetic aspects, even if it had no utilitarian purpose. Since the vast
152. A few years after she designed them, Galiano received copyright protection for
sketches she made of the garments. Id.
153. Id. at 414.
154. Id. at 418 (“Acknowledging the comprehensiveness of [Pivot Point], however, is
not tantamount to applying it here. We do not reject the Pivot Point test in this circuit but
we decline to apply it to the instant facts . . . .”).
155. 745 F.2d 1238 (9th Cir. 1984). For a discussion of Poe, see supra notes 70–83 and
accompanying text.
156. Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980). For a
discussion of Kieselstein-Cord, see supra notes 96–103 and accompanying text.
157. Harrah’s, 416 F.3d at 420; see also Poe, 745 F.2d at 1243 (listing, as one of four
possible considerations for district court on remand, “admissibility of evidence as to
Aquatint No. 5’s marketability as a work of art”); Kieselstein-Cord, 632 F.2d at 991 (noting
commercial success of belt buckles and their acceptance into permanent collection of
Metropolitan Museum of Art). The Fifth Circuit also drew some inspiration from the
Nimmer test: whether “‘there is 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.’” Harrah’s, 416 F.3d at 419 (quoting 1 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright § 2.08(B)(3) (2005)).
158. Harrah’s, 416 F.3d at 421.
159. See id. (“We therefore adopt the likelihood-of-marketability standard for garment
designs only, because it appears ﬁrmly rooted as the implicit standard courts have been
using for quite some time.” (footnote omitted)).
160. Id. at 422 (“Gianna makes no showing that its designs are marketable independently
of their utilitarian function as casino uniforms.”).
150 COLUMBIA LAW REVIEW [Vol. 115:127
majority of people purchase clothes based on both aesthetic and functional
considerations, this would likely render most garments ineligible
for protection.
Though courts are clearly divided on just how the conceptualseparability
analysis should function, it seems as if no court has proposed
an iteration of the test that would allow for protection of garments that
are both artistic and functional. It appears clear that this places garments
outside the realm of copyrightable subject matter. Since garments are
useful articles that fail the conceptual-separability test, they avoid copyright
preemption and could be the subject of state legislation.
B. The Equivalency Requirement
Even though garments are not copyrightable subject matter, which
fact alone is enough to preclude preemption,161
it is nonetheless worthwhile
to consider whether a state law that addresses copyrightability of
garments would extend a right equivalent to those provided by federal
copyright as an alternate ground for avoiding preemption. Again, section
301 makes clear that it does not preempt “any rights or remedies under
the common law or statutes of any State with respect to . . . activities
violating legal or equitable rights that are not equivalent to any of the
exclusive rights within the general scope of copyright.”162
However, if a
state-level right contains an “extra element” that goes beyond those
involved in a copyright-infringement claim, this is generally enough to
preclude preemption by placing the right outside the realm of federal
copyright.163
An example of this is the “hot news” misappropriation
claim, which protects “property rights in time-sensitive information so
that the information will be made available to the public,” because, without
protection, “no one would have an incentive to collect ‘hot news’”
and the “newspaper-reading public would suffer.”164
A “hot news” claim
avoids preemption through the extra elements of “time-sensitive factual
information, free-riding by the defendant, and a threat to the very
existence of the plaintiff’s product,”165
which make the claim distinctly
different from that of copyright infringement. This section looks at
161. See supra Part I (discussing how state law is preempted only if it meets both
prongs of preemption test).
162. 17 U.S.C. § 301(b) (2012).
163. Computer Assocs. Int’l, Inc. v. Altai, Inc., 982 F.2d 693, 716 (2d Cir. 1992) (“[I]f
an ‘extra element’ is ‘required instead of or in addition to the acts of reproduction,
performance, distribution or display, in order to constitute a state-created cause of action,
then the right does not lie “within the general scope of copyright,” and there is no
preemption.’” (quoting 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
§ 1.01(B) (1991))).
164. NBA v. Motorola, Inc., 105 F.3d 841, 853 (2d Cir. 1997).
165. Forest Park Pictures v. Universal Television Network, Inc., 683 F.3d 424, 430–31
(2d Cir. 2012).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 151
examples of extra elements and examines the “hot news” misappropriation
claim in greater detail as a possible model for fashion protection.
1. Extra Elements. — Courts in a variety of causes of action have
found “extra elements” that are sufficient to save the claim from preemption.
For example, trade-secret166
claims at times contain the requisite
extra element, which is often phrased as either “breach of trust or
conﬁdence”167
or merely “secrecy.”168
House Report 1476 also makes
clear that copyright preemption was not meant to reach trade-secret
claims.169
Likewise, a breach-of-contract claim typically does not run into
preemption problems because it contains the extra element of a prom-
ise170
or the existence of the contract itself.171
Congress also made clear
that nothing in section 301 “derogates from the rights of parties to contract
with each other and to sue for breaches of contract.”172
Similarly, a
Desny claim—the “implied contract right to compensation when a writer
submits material to a producer with the understanding that the writer
will be paid if the producer uses the concept”173
—will normally avoid
166. A “trade secret” refers to information that meets three criteria: “(1) [I]t must
confer a competitive advantage when kept secret; (2) it must be secret in fact; and (3) in
many states, it must be protected by reasonable secrecy safeguards.” Robert G. Bone, A
New Look at Trade Secret Law: Doctrine in Search of Justiﬁcation, 86 Calif. L. Rev. 241,
248 (1998).
167. See Gates Rubber Co. v. Bando Chem. Indus., Ltd., 9 F.3d 823, 847–48 (10th Cir.
1993) (stating “breach of a duty of trust or conﬁdence” is extra element for trade-secret
claims); Brainard v. Vassar, 561 F. Supp. 2d 922, 931 (M.D. Tenn. 2008) (“The plaintiffs
have correctly noted that misappropriation of trade secrets claims often defeat preemption
because trade secrets claims require the extra element of a ‘breach of duty of trust
and conﬁdentiality.’”).
168. See AtPac, Inc. v. Aptitude Solutions, Inc., 787 F. Supp. 2d 1108, 1115 (E.D. Cal.
2011) (noting “CRiis and the surrounding ideas and processes qualify as trade secrets” and
this extra element made “claim qualitatively different from a copyright infringement
action”); Firoozye v. Earthlink Network, 153 F. Supp. 2d 1115, 1131 (N.D. Cal. 2001)
(noting qualiﬁcation as trade secret under applicable state statute was extra element that
differentiated trade-secrets claim from copyright-infringement claim).
169. See H.R. Rep. No. 94-1476, at 132 (1976) (“The evolving common law right[]
of . . . trade secrets . . . would remain unaffected as long as the causes of action contain
elements, such as . . . breach of trust or conﬁdentiality, that are different in kind from
copyright infringement.”).
170. See Dorsey v. Money Mack Music, Inc., 304 F. Supp. 2d 858, 865 (E.D. La. 2003)
(“The existence of a promise or ﬁduciary duty renders plaintiff’s claims qualitatively
different from a copyright infringement claim, and thus cannot be preempted.”); Brignoli
v. Balch Hardy & Scheinman, Inc., 645 F. Supp. 1201, 1205 (S.D.N.Y. 1986) (“Claims One,
Two, Four, and Five are essentially breach of contract claims that involve an element
beyond unauthorized reproduction and use—a promise to pay plaintiff for use of his
product.”).
171. See Huckshold v. HSSL, L.L.C., 344 F. Supp. 2d 1203, 1208 (E.D. Mo. 2004)
(“[I]n addition to having to prove the extra element of HSSL permitting Miller to copy
the Software, Plaintiff must also prove the extra element of the contract itself.”).
172. H.R. Rep. No. 94-1476, at 132.
173. Montz v. Pilgrim Films & Television, Inc., 649 F.3d 975, 976 (9th Cir. 2011) (citing
Desny v. Wilder, 299 P.2d 257 (Cal. 1956)).
152 COLUMBIA LAW REVIEW [Vol. 115:127
preemption because it includes the extra element of an implied promise
to pay.174
Fraud claims may also survive preemption, due to the extra
element of misrepresentation.175
Additionally, unfair-competition claims
may avoid preemption through various extra elements, such as intentional
deception,176
consumer confusion,177
and “passing off.”178
House
Report 1476 buttresses this: “Section 301 is not intended to preempt
common law protection in cases involving activities such as false labeling,
fraudulent representation, and passing off even where the subject matter
involved comes within the scope of the copyright statute.”179
Conversion
claims may also survive copyright preemption due to the element of
wrongful possession of or interference with the plaintiff’s property.180
A state statute that extends protection to garment designs would
most likely resemble the federal copyright’s exclusive right to “reproduce
the copyrighted work in copies.”181
Though the fact that garments do not
qualify as copyrightable subject matter should be enough to prevent preemption,
a state law could still take its cues from these “extra elements”
in order to err on the side of safety. Adding in an element of secrecy—
such as requiring the garment designs to be kept under lock and key—
174. Id. at 981 (affirming “implied contractual claim to compensation for use of a
submitted idea” avoids preemption); Grosso v. Miramax Film Corp., 383 F.3d 965, 968 (9th
Cir. 2004) (noting prior cases support “treating the implied promise to pay required by
Desny as an ‘extra element’ for preemption purposes”).
175. See Bean v. McDougal Littell, 538 F. Supp. 2d 1196, 1200 (D. Ariz. 2008)
(“McDougal’s alleged misrepresentation during the dealing for the licenses provides an
extra element which distinguishes the nature of Bean’s fraud action from a copyright
claim.”); Brignoli, 645 F. Supp. at 1205–06 (stating fraud claim includes extra element of
misrepresentation and ﬁnding no preemption).
176. See Samara Bros. v. Wal-Mart Stores, Inc., 165 F.3d 120, 131 (2d Cir. 1998) (“We
agree that ‘intentional deception’ constitutes an extra element not required in a copyright
infringement claim.”), rev’d on other grounds, 529 U.S. 205 (2000).
177. See id. (“Like the requirement of ‘intentional deception,’ ‘actual confusion’
constitutes an extra element.”); Kindergartners Count, Inc. v. DeMoulin, 171 F. Supp. 2d
1183, 1192 (D. Kan. 2001) (“Proof of customer confusion or deception and/or proof of a
conﬁdential relationship and the breach thereof are extra elements that keep this unfair
competition claim from being preempted.”).
178. See Too, Inc. v. Kohl’s Dep’t Stores, Inc., 210 F. Supp. 2d 402, 405 (S.D.N.Y. 2002)
(“Accordingly, because Too’s claim for unfair competition is based on an allegation that
Windstar copied and passed off Too’s works as its own, it is not preempted and the
proposed amendment is not futile.”); Rubin v. Brooks/Cole Publ’g Co., 836 F. Supp. 909,
924–25 (D. Mass. 1993) (“Thus, although somewhat factually dissimilar from boilerplate
‘passing off’ claims in which the defendant pretends that the product is the plaintiff’s,
Rubin’s claim similarly contains an extra element of misrepresentation with regard to the
sponsorship or authorization of the reproduction.” (citations omitted)).
179. H.R. Rep. No. 94-1476, at 132 (1976).
180. See Carson v. Dynegy, Inc., 344 F.3d 446, 455–57 (5th Cir. 2003) (stating elements
of conversion of physical property under Texas law and noting they are “qualitatively
different than those of copyright infringement”).
181. 17 U.S.C. § 106(1) (2012); see also supra Part I.B (discussing equivalency
requirement).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 153
would not make sense given the nature of the fashion industry. Clothes
are very much in the public eye from the moment they appear on the
runway to the moment they are hung on racks in stores. This public
exposure is essential for designers seeking to get their garments into
retail stores.182
It is also quite easy to reverse engineer the designs of
garments once they are released to the public. Furthermore, any contractual
claim would not be plausible, since it is highly unlikely that the
designer and the manufacturer of the knockoff are parties to a contract.
The extra elements accompanying fraud and unfair-competition claims
initially seem appealing, and consumer confusion could indeed be a
worthy addition to a state law for garment protection, but requiring
proof of misrepresentation, passing off, or intentional deception would
likely present too high of a barrier. Fashion pirates, with the exception of
counterfeiters, often are not trying to pass off their products as those of a
designer or intentionally deceive customers; they are merely appropriating
someone else’s design and free riding on someone else’s creativity.
However, one seemingly unlikely claim bears closer examination: “hot
news” misappropriation.
2. “Hot News” Misappropriation. — House Report 1476 explicitly
articulates “hot news” misappropriation as a cause of action left to the
states.183
The “hot news” claim originated in International News Service v.
Associated Press,184
which involved news piracy. The Associated Press (AP)
accused International News Service (INS) of copying the news from AP
bulletins and selling it to its clients.185
Occasionally, INS was able to
disseminate the copied news to its West Coast clients at the same time, or
even before, AP delivered it to its own clients.186
AP could not bring a
182. See Josh Patner, Fashion Week FAQ, Slate (Sept. 13, 2004, 7:01 PM), http://www.
slate.com/articles/arts/fashion/2004/09/fashion_week_faq.html (on ﬁle with the Columbia
Law Review) (discussing importance of fashion-week runway shows to “fashion press, retail
buyers, and others with inﬂuence in the fashion world”).
183. See H.R. Rep. No. 94-1476, at 132 (“[S]tate law should have the ﬂexibility to
afford a remedy (under traditional principles of equity) against a consistent pattern of
unauthorized appropriation by a competitor of the facts (i.e., not the literary expression)
constituting ‘hot’ news . . . .”).
184. See Lauren M. Gregory, Hot off the Presses: How Traditional Newspaper
Journalism Can Help Reinvent the “Hot News” Misappropriation Tort in the Internet Age,
13 Vand. J. Ent. & Tech. L. 577, 587 (2011) (“The INS decision marked the birth of the
‘hot news’ misappropriation tort that inspired vigorous dissent at the time and draws
criticism even today.”).
185. See Int’l News Serv. v. Associated Press, 248 U.S. 215, 232 (1918) (“The only
matter that has been argued before us is whether defendant may lawfully be restrained
from appropriating news taken from bulletins issued by complainant or any of its members,
or from newspapers published by them, for the purpose of selling it to defendant’s
clients.”).
186. See id. at 238–39 (“[I]rregularities in telegraphic transmission on different lines,
and the normal consumption of time in printing and distributing the newspaper, result in
permitting pirated news to be placed in the hands of defendant’s readers sometimes
154 COLUMBIA LAW REVIEW [Vol. 115:127
claim for copyright infringement because the news, as factual matter, is
not copyrightable.187
Yet the Supreme Court held that INS’s actions were
not permissible:
Stripped of all disguises, the process amounts to an unauthorized
interference with the normal operation of complainant’s
legitimate business precisely at the point where the proﬁt is to
be reaped, in order to divert a material portion of the proﬁt
from those who have earned it to those who have not; with
special advantage to defendant in the competition because of
the fact that it is not burdened with any part of the expense of
gathering the news.188
The Court declined to modify the rather nebulous injunction granted by
the district court, which restrained “any taking or gainfully using of the
complainant’s news . . . ‘until its commercial value as news to the complainant
and all of its members has passed away.’”189
While INS is no longer good law,
it is widely agreed that “hot news” claims can survive preemption.190
There are three “extra elements” to a “hot news” claim that enable
it to survive preemption: “(i) the time-sensitive value of factual information;
(ii) the free-riding by a defendant; and (iii) the threat to the very
existence of the product or service provided by the plaintiff.”191
Though
“hot news” might seem like an unlikely analogy for fashion, this framework
could be adapted to a law protecting garment designs.192
If such a
state law were adopted, not only would it avoid preemption under the
ﬁrst prong of the preemption test requiring copyrightable subject mat-
ter,193
but the law would escape under the second prong, requiring equiv-
alency,194
as well.
simultaneously with the service of competing Associated Press papers, occasionally even
earlier.”).
187. See id. at 232 (discussing copyrightability, or lack thereof, of news); see also Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991) (“The key to resolving the
tension lies in understanding why facts are not copyrightable. The sine qua non of copyright
is originality. To qualify for copyright protection, a work must be original to the
author.”).
188. INS, 248 U.S. at 240.
189. Id. at 245–46.
190. Barclays Capital Inc. v. Theﬂyonthewall.com, Inc., 650 F.3d 876, 894 (2d Cir.
2011). Indeed, the Second Circuit has “used INS as a description of the types of claims—
‘INS-like’—that, Congress has said, are not necessarily preempted by federal copyright
law . . . . INS thus maintains a ghostly presence as a description of a tort theory, not as a
precedential establishment of a tort cause of action.” Id.
191. See NBA v. Motorola, Inc., 105 F.3d 841, 853 (2d Cir. 1997) (noting these three
extra elements allow “hot news” claim to survive preemption); see also Forest Park
Pictures v. Universal Television Network, Inc., 683 F.3d 424, 430–31 (2d Cir. 2012) (same).
192. For a discussion of how the elements would function in the context of fashion,
see infra Part III.B, which discusses one potential model for state law protecting garment
designs.
193. See supra Part I.A (discussing subject-matter requirement of preemption test).
194. See supra Part I.B (discussing equivalency requirement of preemption test).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 155
Because garments fail under any iteration of the separability test,
garments are useful articles that are outside the realm of copyrightable
subject matter. Therefore, a state law that protects garment designs
would not run afoul of federal copyright preemption. Additionally, it
appears as if it would be possible for a law addressing garment designs to
incorporate “extra elements,” thus failing to meet either prong of the
preemption test. States are therefore free to craft legislation to protect
garment designs without fear of preemption. Part III discusses how such
a law could function and why one should be passed in New York.
III. NEW YORK SHOULD MAKE A FASHION STATEMENT
The fashion industry makes an enormous contribution to the econ-
omy;195
“[it] shows the highest revenues of all creative industries, exceeding
those of books, movies and music combined,”196
all of which are eligible
for copyright protection under United States law.197
However, despite
these contributions, efforts to protect works of fashion have largely
failed.198
Due to Congress’s inactivity on the subject and the fact that this
appears to be an area on which states may legislate,199
states should take
this opportunity to pass laws that provide protection to garments. This
Part explores the possibility of New York becoming the ﬁrst state to
implement such a law and discusses how the law could function; it also
addresses a few lingering objections.
A. Why New York?
Of the four international fashion capitals, only one is in the United
States—New York City.200
Fashion is vitally important to New York City; it
is a “$55 billion industry that employs 165,000 people, accounts for 5.5
percent of the city’s workforce and generates nearly $2 billion annually
195. The global fashion industry is worth $1.3 trillion and makes up 2.1% of the global
gross domestic product, with the North American market worth $352 billion. Eveline van
Keymeulen & Louise Nash, Fashionably Late, Intell. Prop. Mag., Dec. 2011–Jan. 2012, at
53, 53, available at http://www.cov.com/files/Publication/8fc11e54-27e2-4da3-9323-06
63dd0a5746/Presentation/PublicationAttachment/45a27275-df92-475b-9e11-11154b0c1061
/Fashionably%20Late.pdf (on ﬁle with the Columbia Law Review).
196. Id.
197. See 17 U.S.C. § 102 (2012) (providing subject matter of copyright).
198. See supra note 15 and accompanying text (discussing failed attempts to protect
fashion at federal level).
199. See supra Part II (discussing copyright preemption as it relates to garment
designs).
200. See Shelley Emling, Big 4 Fashion Weeks Get New Company, N.Y. Times (Oct. 3,
2006), http://www.nytimes.com/2006/10/03/style/03iht-Rweeks.3015966.html (on ﬁle
with the Columbia Law Review) (referring to Paris, London, Milan, and New York as “traditional
four fashion capitals”).
156 COLUMBIA LAW REVIEW [Vol. 115:127
in tax revenues.”201
More than 800 fashion companies are based in New
York City, and the twice-yearly New York Fashion Week “generates $466
million in direct visitor spending, leading to $782 million in total
economic impact per year.”202
New York City is also the home of major
fashion periodicals, such as Vogue, W, and Harper’s Bazaar.203
Parsons The
New School for Design, which boasts such alumni as Marc Jacobs, Tom
Ford, Donna Karan, and Narciso Rodriguez,204
and the Fashion Institute
of Technology, which is responsible for Calvin Klein, Francisco Costa,
and Norma Kamali,205
are both based in New York City. As the fashion
capital of the United States,206
New York would be an obvious choice for a
state law extending protection to fashion designs.
B. What Would the Law Look Like?
As a preliminary matter, the fashion designer would be required to
show that she designed the garment before the alleged pirate did. In
order to do this, the designer could point to the garment’s appearance in
a runway show, the fact that it was sold—either in stores or online—
under her label, published photographs or sketches of the design or garment,
notarized sketches, or any other mechanism demonstrating that
her design predated the knockoff. The designer would also need to show
that both her original garment and the knockoff were available for sale
in the state in question at the same time. The designer would then have
to show that her design was misappropriated.
One of the simplest ways to avoid preemption is to ensure that the
cause of action contains elements “that are different in kind from copyright
infringement”207
—or “extra elements.”208
The extra elements in a
“hot news” misappropriation claim can serve as a model for a state law
201. Ruth La Ferla, Preserving New York as a Fashion Capital, N.Y. Times: On the
Runway (Nov. 2, 2010, 5:20 PM), http://runway.blogs.nytimes.com/2010/11/02/preservingnew-york-as-a-fashion-capital/
(on ﬁle with the Columbia Law Review).
202. Innovative Design Protection Act Reintroduced, Council of Fashion Designers of
Am. (Sept. 12, 2012), http://cfda.com/the-latest/innovative-design-protection-act-reintroduced
(on ﬁle with the Columbia Law Review).
203. See Brands/Media Kits, Condé Nast, http://www.condenast.com/brands (on ﬁle
with the Columbia Law Review) (last visited Oct. 8, 2014) (displaying brands operated by
media company Condé Nast, which is headquartered in New York City); Harper’s Bazaar,
Hearst, http://www.hearst.com/magazines/harpers-bazaar (on ﬁle with the Columbia Law
Review) (last visited Oct. 8, 2014) (noting Harper’s Bazaar, “world-renowned arbiter of
fashion and good taste,” is headquartered in New York City).
204. Fashion, New Sch., http://www.newschool.edu/parsons/fashion-school/ (on ﬁle
with the Columbia Law Review) (last visited Oct. 8, 2014).
205. Noted FIT Alumni, Fashion Inst. of Tech., http://www.ﬁtnyc.edu/5002.asp (on
ﬁle with the Columbia Law Review) (last visited Oct. 8, 2014).
206. See Emling, supra note 200 (discussing world’s fashion capitals).
207. H.R. Rep. No. 94-1476, at 132 (1976).
208. See supra Part II.B.1 (discussing extra elements that enable claim to avoid
preemption).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 157
protecting works of fashion.209
The relevant extra elements are (1) time
sensitivity, (2) free riding by the pirate, and (3) the threat to the existence
of the original.210
1. Time Sensitivity. — The ﬁrst element, time sensitivity, also applies
in the fashion context. Like the facts that make up a news article,
garments are not copyrightable subject matter,211
but garments are (like
the news) time sensitive in their own way. In addition to the seasonal
approach to fashion and the fact that it is a constantly refreshing medium,
knockoffs are particularly problematic because they often appear in
stores before the originals. For instance, Forever 21 recently was able to
manufacture and ship to its stores a T-shirt resembling a look that
acclaimed American fashion designer Alexander Wang introduced on
the runway only ﬁfteen days earlier.212
Tom Ford, another established
American fashion designer, described the futility of designing clothing
only to have someone produce a knockoff almost instantaneously: “[A]ll
of the fast-fashion companies that do a great job, by the way, knock everything
off. So it’s everywhere all over the streets in three months and by
the time you get it to the store, what’s the point?”213
Anna Sui, an
American designer who has sued Forever 21 for copying twenty-six of her
designs, expressed a similar sentiment: “For me, this is not simply about
copying . . . . The issue is also timing . . . . These copies are hitting the
market before the original versions do.”214
Oscar Wilde once famously quipped that “fashion is merely a form
of ugliness so absolutely unbearable that we have to alter it every six
209. See supra Part II.B.2 (discussing “hot news” misappropriation claim).
210. NBA v. Motorola, Inc., 105 F.3d 841, 853 (2d Cir. 1997).
211. See supra Part II.A (discussing whether garments fall under umbrella of copyrightable
subject matter).
212. See Kenzie Bryant, Forever 21 Made an Alex Wang ‘Parental Advisory’ Knock-Off,
Racked (Sept. 23, 2013), http://racked.com/archives/2013/09/23/forever21-already-madethat-alexander-wangs-parental-advisory-knockoff.php
(on ﬁle with the Columbia Law Review)
(depicting Forever 21 T-shirt and Alexander Wang sweatshirt, both with “Parental
Advisory” logo). The “Parental Advisory” designs by Alexander Wang walked the runway
as part of his Spring 2014 Ready-to-Wear Collection at New York Fashion Week in early
September 2013. See Look 15 of Alexander Wang Spring 2014 Ready-to-Wear, Style.com,
http://www.style.com/slideshows/fashion-shows/spring-2014-ready-to-wear/alexander-wang/
collection/15 (on ﬁle with the Columbia Law Review) (last visited Oct. 8, 2014) (depicting
model in “Parental Advisory” shirt); Look 16 of Alexander Wang Spring 2014 Ready-toWear,
Style.com, http://www.style.com/slideshows/fashion-shows/spring-2014-ready-to-wear/
alexander-wang/collection/16 (on ﬁle with the Columbia Law Review) (last visited Oct. 8,
2014) (same).
213. Bridget Foley, Tom Ford Disses Fashion World’s Cult of Immediacy, Women’s
Wear Daily (Sept. 14, 2010), http://www.wwd.com/fashion-news/fashion-features/tom-forddisses-fashion-worlds-cult-of-immediacy-3267063
(on ﬁle with the Columbia Law Review).
214. Eric Wilson, Fashion Industry Grapples with Designer Knockoffs, N.Y. Times
(Sept. 4, 2007), http://www.nytimes.com/2007/09/04/business/worldbusiness/04iht-fashion
.1.7373169.html (on ﬁle with the Columbia Law Review).
158 COLUMBIA LAW REVIEW [Vol. 115:127
months.”215
Given the nature of the fashion industry, garments are essentially
perishable items. The ﬁrst element of the claim would require the
designer to make some kind of showing that the value of the article is
highly time sensitive. This could involve providing information regarding
the average lifespan of such a garment before it becomes outdated. The
designer could also show the difference between how long it will take the
original and knockoff to be manufactured and shipped to stores. If, as is
often the case,216
it is likely the knockoff will hit stores ﬁrst, this evidence
could be sufficient to show the knockoff “scoops” the original, thereby
damaging its value in the market. Ultimately, given the garment’s short
lifespan in a fast-paced industry and the pirates’ ability to get clothes into
stores at a rapid speed, the designer should show that her ability to
recoup her investment in creating the original is jeopardized.
2. Free Riding by the Pirate. — The second element of the claim under
a state law would be free riding,217
a key concern of the fashion industry;
it is not just the copying that is troubling, but also the fact that pirates are
able to appropriate a design without the requisite creativity, time, energy,
and expense. Narciso Rodriguez, the American designer responsible for
Carolyn Bessette-Kennedy’s minimalistic wedding gown,218
once maintained
that design pirates could make more from copying and mass
producing just one of his designs than he could earn from his entire
collection.219
In fact, Rodriguez was only able to sell forty copies of the
Bessette-Kennedy wedding gowns. Copycats sold millions.220
“Some may
say that I beneﬁted from the publicity,” Rodriguez said of this copying,
but “publicity with no sales does not pay the bills.”221
This is the same
215. Oscar Wilde, The Philosophy of Dress, N.Y. Daily Trib., Apr. 19, 1885, at 9.
216. Manufacturers are increasingly able to get clothes into stores at dizzying speeds.
Zara is able to design, manufacture, and ship new items to its stores across the globe in just
two weeks; H&M sends new items to stores within eight weeks; and Forever 21 has new
items in stores within six weeks. Elizabeth L. Cline, Overdressed: The Shockingly High
Cost of Cheap Fashion 98–99 (2013); see also supra note 212 and accompanying text
(describing Forever 21’s Alexander Wang knockoff, which hit stores just ﬁfteen days after
it appeared on runway).
217. A free rider is someone who appropriates the plaintiff’s product without the
requisite “costly efforts” to develop it himself, thus allowing him “to produce a directly
competitive product for less money because [he] has lower costs.” NBA v. Motorola, Inc.,
105 F.3d 841, 852, 854 (2d Cir. 1997).
218. The Best Dressed Celebrity Brides of All Time, InStyle, http://www.instyle.com/
instyle/package/general/photos/0,,20464370_20403733_20813890,00.html (on ﬁle with the
Columbia Law Review) (last visited Oct. 13, 2014) (depicting Carolyn Bessette-Kennedy’s
wedding gown).
219. Design Law—Are Special Provisions Needed to Protect Unique Industries?:
Hearing Before the Subcomm. on Courts, the Internet & Intellectual Prop. of the H.
Comm. on the Judiciary, 110th Cong. 22 (2008) (statement of Narciso Rodriguez, fashion
designer).
220. Id.
221. Id. at 26. And, according to Rodriguez, the bills are high:
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 159
concern at issue in INS: The pirate will swoop in “precisely at the point
where the proﬁt is to be reaped . . . with special advantage to [him] in
the competition because of the fact that [he] is not burdened with any
part of the expense.”222
The analysis for this second element is most similar to copyright’s
substantial-similarity analysis for infringement. Here, the designer would
need to show that the designs are so similar that the pirate’s burden in
creating the garment was substantially reduced. In other words, the
designer would have to show that the pirate did not have to put in the
creativity, time, energy, and expense involved in creating an original
garment because he merely copied her design. Therefore, the pirate
obtained an economic beneﬁt at the designer’s expense without bearing
any of the burdens.223
3. The Threat to the Existence of the Original. — The third element of
the claim would require the designer to show that the knockoff threatens
the existence of the original. In addition to the timing issues,224
masscopying
can also make the original item less unique. Why spend money
To design and fabricate my 250 piece collection it takes six to twelve
months. The fall and spring runway shows cost on average $800,000 to
stage. The fabric another $800,000, the work room that develops the
patterns and garments another $1,500,000. The travel budget for design
and fabric development is $350,000 and marketing is another
$2,500,000[.] There are so many aspects of a fashion business that make
it risky in the best of circumstances, and the pirates are only making it
riskier.
Id. at 25.
222. Int’l News Serv. v. Associated Press, 248 U.S. 215, 240 (1918).
223. The Second Circuit took a narrower approach to the “free-riding” element in
Barclays Capital Inc. v. Theﬂyonthewall.com, Inc., 650 F.3d 876 (2d Cir. 2011). There, the
court found the plaintiffs’ “hot news” claim preempted by federal copyright. Id. at 902
(“[T]he Firms’ claim for ‘hot news’ misappropriation fails because it is preempted by the
Copyright Act.”). The court noted that the defendant was not free riding because the
plaintiffs were attempting to protect something they created as opposed to acquired. Id. at
903 (“[T]he Firms seek only to protect their Recommendations, something they create
using their expertise and experience rather than acquire through efforts akin to reporting.”).
Furthermore, the defendant was not selling the information as its own. In actuality,
it was the defendant’s accurate attribution to the plaintiffs that gave the information its
value. Id. In Barclays, the court found that the proﬁt was not even being diverted to the
defendant. Id. at 904 (“[I]t is not at all clear that that proﬁt is being in any substantial
sense ‘diverted’ to Fly by its publication of Recommendations news. The lost commissions
are . . . diverted to whatever broker happens to execute a trade placed by the recipient of
news of the Recommendation from Fly.”). Though one could make the “creating” versus
“acquiring” distinction with respect to fashion designers, since they “create” their garments
as opposed to culling them from other sources, the other two factors the Second
Circuit pointed to are certainly relevant in the context of the fashion industry. In the
typical case, the pirate is selling the appropriated designs as his own and is not attributing
the design to the original designer. Furthermore, the pirate is absolutely the one to whom
the proﬁts are diverted.
224. See supra notes 212–214 and accompanying text (discussing problem of knockoff
hitting market before original).
160 COLUMBIA LAW REVIEW [Vol. 115:127
on the real thing when people might just assume it was mass-produced
and purchased for under $20 at a fast-fashion chain? Knockoffs can thus
hurt designers in two ways. First, a low-priced knockoff may lure some
buyers to purchase the knockoff in place of the original if the buyer just
wants the look and not necessarily the quality or originality.225
In this way,
design piracy tends to hurt emerging and mid-range designers—who may
be closer to the fast-fashion price point—the most. In fact, these
designers bring the majority of litigation against stores like Forever 21.226
Second, the knockoff may dissuade a buyer from purchasing the original,
out of fear of being perceived as someone who would purchase lowquality,
mass-produced items at fast-fashion stores. This has been referred
to, somewhat unkindly, as the “snob effect.”227
The threat to the original garment’s existence could be shown in a
few different ways. The ﬁrst and most obvious way would be to show that
the pirate’s ability to undercut the price of the original makes the knockoff
a substitute for the original. The designer would show the pirate’s
ability to save money by mass-producing and cutting corners in terms of
craftsmanship, material quality, and labor costs, and that such working
conditions enabled the pirate to sell a knockoff at a lower price that
would lure in potential purchasers of the original. The original designer
could also make an argument similar to a trademark-tarnishment claim.
A trademark is tarnished when it is
linked to products of shoddy quality, or is portrayed in an
unwholesome or unsavory context likely to evoke unﬂattering
thoughts about the owner’s product. In such situations, the
trademark’s reputation and commercial value might be dimin-
225. See Hemphill & Suk, supra note 14, at 1175–76 (“Moreover, for a midrange
designer . . . , the sales of the copy substitute for and hence reduce sales of the original
. . . . Sometimes the substitution is made by an aggressive retailer, rather than the ﬁnal
consumer. Either way, the proﬁts of the original designer can be much reduced.”
(footnotes omitted)).
226. Id. at 1176 (“[Midrange designers] . . . bring most of the lawsuits that attempt to
circumvent the lack of design protection by alleging copyright or trade dress violations
under existing law, against Forever 21 and other fast-fashion copyists.”).
227. See id. (“In addition to replacing sales, the prevalence of cheaper copies also may
reduce demand for the original design. This ‘snob’ effect may reﬂect a consumer’s desire
for distinction from lower-status consumers or from other consumers more generally.”
(citation omitted)); cf. Simon Doonan, How Snooki Got Her Gucci: The Dirt on Purses,
N.Y. Observer (Aug. 17, 2010, 9:55 PM), http://observer.com/2010/08/how-snooki-gother-gucci-the-dirt-on-purses/
(on ﬁle with the Columbia Law Review) (describing how
fashion houses sent Snooki their competitors’ bags as form of “preemptive product
placement” or “unbranding”); Elizabeth Holmes, Abercrombie and Fitch Offers to Pay
“The Situation” to Stop Wearing Its Clothes, Wall St. J.: Speakeasy (Aug. 16, 2011, 7:31
PM), http://blogs.wsj.com/speakeasy/2011/08/16/abercrombie-and-ﬁtch-offer-to-pay-thesituation-to-stop-wearing-their-clothes/
(on ﬁle with the Columbia Law Review) (quoting
Abercrombie & Fitch statement offering to pay “The Situation” to stop wearing its clothes
as saying, “We understand that the show is for entertainment purposes, but believe this
association is contrary to the aspirational nature of our brand, and may be distressing to
many of our fans”).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 161
ished because the public will associate the lack of quality or lack
of prestige in the defendant’s goods with the plaintiff’s unrelated
goods, or because the defendant’s use reduces the trademark’s
reputation and standing in the eyes of consumers as a
wholesome identiﬁer of the owner’s products or services.228
In explaining trademark tarnishment, Judge Posner gave the example of
a “striptease joint” that named itself “Tiffany” and explained that,
“because of the inveterate tendency of the human mind to proceed by
association, every time [consumers] think of the word ‘Tiffany’ their
image of the fancy jewelry store will be tarnished by the association of the
word with the strip joint.”229
The designer could argue the existence of
the knockoff “tarnishes” the original by diminishing its uniqueness and
cachet and altering perceptions of its quality and high-end nature.
Therefore, the designer could argue the knockoff serves as a substitute
for the original, or it could argue the knockoff tarnishes the original, or
both. It may be appropriate for the designer to use consumer surveys or
expert opinion to make this point.
Importantly, legislators should ensure the term of protection
provided by the law is not too lengthy. Due to the fast-paced nature of the
fashion industry, garment designs only stay relevant for a limited time. A
maximum term of protection of two years would cover the time necessary
to design, manufacture, ship, and sell a garment. During this time, the
law would preclude pirates from creating a knockoff.
C. Possible Objections to a State Law
1. Did Congress Intend to Leave Fashion in the Public Domain? — The
term “public domain” refers to the “universe of inventions and creative
works that are not protected by intellectual-property rights and are
therefore available for anyone to use without charge,” including works
whose intellectual-property rights have expired.230
In Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., the Supreme Court struck down a Florida
statute under the Supremacy Clause.231
The statute precluded the reverse
engineering of boat-hull designs that were in the public domain.232
The
Court stressed the impropriety of allowing states to protect works in the
public domain and made clear that such state action “impermissibly contravenes
the ultimate goal of public disclosure and use which is the
centerpiece of federal patent policy.”233
228. Deere & Co. v. MTD Prods., 41 F.3d 39, 43 (2d Cir. 1994) (footnote omitted).
229. Ty Inc. v. Perryman, 306 F.3d 509, 511 (7th Cir. 2002).
230. Black’s Law Dictionary 1349 (9th ed. 2009).
231. 489 U.S. 141, 168 (1989).
232. Id. at 160 (“In essence, the Florida law prohibits the entire public from engaging
in a form of reverse engineering of a product in the public domain.”).
233. Id. at 156–57.
162 COLUMBIA LAW REVIEW [Vol. 115:127
“It may be unfortunate—it may indeed be unjust—that the law
should not thereafter distinguish between ‘originals’ and copies,” the
Second Circuit noted of garment designs over seven decades ago, “but
until the Copyright Office can be induced to register such designs as
copyrightable under the existing statute, they both fall into the public
demesne without reserve.”234
This raises the question of whether
Congress intentionally left works of fashion in the public domain. Trademark
and trade dress235
can provide some protection to handbags236
and
shoes.237
Design patents are also an option for works of fashion,238
but
tend to be cost prohibitive when it comes to patenting an entire collection’s
worth of garments.239
Most importantly, design patents are often
not worthwhile for garments since it can take eight to twenty months for
the patent to issue.240
By the time the designer actually has the patent in
hand, the garments likely will be, at best, on sales racks. Design patents
are thus a better option for accessories and staples of a particular
designer that will be produced season after season. Given the ability to
gain piecemeal protection through the other intellectual-property
regimes, it is unlikely that Congress intended for works of fashion to
remain in the public domain.
234. Fashion Originators Guild of Am. v. FTC, 114 F.2d 80, 84 (2d Cir. 1940).
235. See supra note 13 and accompanying text (noting literature on use of existing
intellectual-property regimes to protect works of fashion).
236. See Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 255 (S.D.N.Y. 2012)
(ﬁnding handbags produced by Guess infringed and diluted Gucci’s trademarks).
237. See Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d
206, 228 (2d Cir. 2012) (holding Christian Louboutin’s signature red sole had acquired
secondary meaning and was thus valid and enforceable trademark).
238. For discussions of the use of design patents in the fashion industry, see, e.g.,
Ferrill & Tanhehco, supra note 13 (suggesting design patents to combat threat of knockoff
goods, as well as strategies for their implementation); Scott D. Locke, Fifth Avenue and
the Patent Lawyer: Strategies for Using Design Patents to Increase the Value of Fashion
and Luxury Goods Companies, 5 J. Marshall Rev. Intell. Prop. L. 40 (2005) (providing
overview of design patents’ beneﬁts, drawbacks, and practical considerations); Erin Geiger
Smith, Fashion Designers Look to Patents to Fight Knockoffs, Reuters (Sept. 12, 2013, 7:32
AM), http://www.reuters.com/article/2013/09/12/us-usa-fashion-newyork-patents-idUSBRE98
B0H420130912 (on ﬁle with the Columbia Law Review) (noting increase in design patents
in fashion industry and selective application of patents based on expected lifespan of
design).
239. Acquiring a design patent can cost upward of $2,000, which can quickly add up
considering the number of garments that goes into a runway collection. See Fashion Law:
A Guide for Designers, Fashion Executives and Attorneys § 2.2.4.7, at 62 (Guillermo C.
Jimenez & Barbara Kolsun eds., 2010) (“The legal fees to prepare and ﬁle a design patent
application are $1,500 to $2,000, plus a PTO fee of $230 . . . . Additional communication
with the PTO Examiner, if needed, can run $500 to $1,000. Paying the ﬁnal issue fee,
including PTO fee, will usually cost around $800.”).
240. Id. § 2.2.4.3, at 61; see also Jack Adelman, Inc. v. Sonners & Gordon, Inc., 112 F.
Supp. 187, 190 (S.D.N.Y. 1934) (noting patent law permits protection of garment designs
“but as a practical matter in many instances this fails to give the needed protection, for
designs and patterns usually are short-lived and with the conditions and time incidental to
obtaining the patent, this protection comes too late, if at all”).
2015] FEDERAL GOVERNMENT’S HAND-ME-DOWNS 163
2. Does Fashion Make Sense as Copyrightable Subject Matter? — It is also
arguable whether it would make sense to consider works of fashion copyrightable
subject matter. The owner of a valid copyright has a monopoly
over his work for the duration of his life plus seventy years241
and can use
it to prevent others from infringing upon any of federal copyright’s ﬁve
exclusive rights: reproduction, preparation of derivative works, distribution,
performance, and display.242
Given the transient and fast-paced
nature of the fashion industry, this degree of protection is excessive.
There is simply no reason to protect garment designs for upward of
seventy years when the vast majority will be out of commission within a
matter of months. While it is conceivable that a book, movie, or song will
be sold for decades, this just is not the case for garment designs, and it is
difficult to come up with an example of a garment that is produced and
sold for more than a season. Just as in INS, the purpose of protection
should be to allow designers to reap the rewards of their creativity “until
its commercial value . . . has passed away”243
—and not a day more. The
sheer extent of protection provided by the federal copyright regime
makes it seem unlikely that Congress would have believed works of
fashion would qualify as copyrightable subject matter.
CONCLUSION
Despite the plethora of literature devoted to intellectual-property
protection for the fashion industry,244
the question of state-level legislation
has gone largely unexplored, presumably due to assumptions that
such laws would be preempted by federal copyright. However, it is possible
for a state law that speaks to garment designs to pass both prongs of
the copyright-preemption test. Since garment designs resoundingly fail
the versions of conceptual separability set out by the courts, garment
designs simply do not qualify as copyrightable subject matter.
Furthermore, it is possible to craft a law in such a way that it does not
impede upon the exclusive rights provided by federal copyright. Thus, a
state law that protects garment designs could very well avoid copyright
preemption.
Though it is possible that a state law would not successfully deter
knockoffs, if multiple states passed such legislation, it could, in the
collective, sufficiently dissuade pirates from appropriating the designs of
241. See 17 U.S.C. § 302(a) (2012) (“Copyright in a work created on or after January
1, 1978, subsists from its creation and, except as provided by the following subsections,
endures for a term consisting of the life of the author and 70 years after the author’s
death.”).
242. See 17 U.S.C. § 106 (describing exclusive rights provided by federal copyright).
243. Int’l News Serv. v. Associated Press, 248 U.S. 215, 245 (1918) (internal quotation
marks omitted).
244. See supra notes 13–14 and accompanying text (noting previous commentary on
fashion industry and intellectual-property protection).
164 COLUMBIA LAW REVIEW [Vol. 115:127
others. A state law, or a group of similar state laws, could also compel
design pirates to comply with the laws’ terms rather than develop different
business practices for different states. Though a statute at the
federal level would be ideal, a state law could still provide some relief for
designers who have been attempting to secure protection for decades.245
Finally, a state law would further the states’ purpose as “laboratories of
democracy.”246
If successful, such a law could convince Congress that it is
time to take action and protect the fashion industry from design piracy.
245. See Fashion Originators’ Guild of Am. v. FTC, 312 U.S. 457, 461, 464 (1941)
(holding trade agreement among fashion designers to refuse to sell garments to retailers
who also sold knockoffs to be unfair method of competition).
246. See New State Ice Co. v. Liebmann, 285 U.S. 262, 311 (1932) (Brandeis, J.,
dissenting) (“It is one of the happy incidents of the federal system that a single courageous
State may, if its citizens choose, serve as a laboratory; and try novel social and economic
experiments without risk to the rest of the country.”).
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