By  on September 12, 2005

NEW YORK — The debate over copyright protections for wearable items comes down to the distinction between art and utility — one is eligible for copyright protection, the other is not.

Many cases have tried to clarify the definition of artistic versus functional elements of apparel, but with little success. Now, friction over the issue is heating up following two recent court decisions.

Part of the problem in understanding the nuances of the law, said copyright lawyers, arises from the fact that the issue has been left to the interpretation of individual state courts.

"The [copyright] law tends to vary from circuit to circuit. You have very different standards being applied in different parts of the country," said Robert Tyler, a Richmond, Va.-based trademark and copyright lawyer and partner with McGuireWoods LLP, New York.

Two decisions handed down by different appellate courts highlight that confusion. In 2002, Chosun International Inc., a Halloween costume manufacturer, filed a suit against Chrisha Creations Ltd., a competing costume manufacturer, for copyright infringement of three of its designs. A Manhattan federal court dismissed the complaint and ruled that, as a matter of law, Halloween costumes were not protected under copyright law because they are functional garments.

"This is an area where the courts have really struggled for years to find the right balance between what is copyrightable and protectable and what is not," said Marshall Beil, also a partner with McGuireWoods. "The basic rule is that functional aspects of clothing cannot be protected by copyright. Artistic elements that can be separated either actually or conceptually from functional elements are protectable. The problem the courts have struggled with is: How do you make a determination as to whether a design element or artistic element is conceptually separable?"

Chosun appealed the summary judgment in the Second Circuit Appellate Court. In its decision, the court pointed out that the 1976 Copyright Act protects a broad category of sculptural, pictorial and graphic works, and highlighted the fact that, while "useful articles," such as a costume, as a whole object might not be protected by copyright law, individual design elements that make up the whole item can be. Ultimately, the Second Circuit remanded the case back to the lower court to be heard.The particular significance of the Chosun decision, said Anthony Handal, a partner of Kirkpatrick & Lockhart, New York, who represented the company, is that the Second Circuit affirmed clothing can be considered under the copyright law if design elements are proven to be separable from functional elements.

"The court was quite specific," Handal said. "It stated that items of wearing apparel may be protectable by the copyright law, subject to the separability analysis, which is the test of copyright protection for any useful object. The courts are now forced to look at items of wearing apparel and determine whether there are aesthetic features that are separate from the functional features of clothing, which are very well defined."

The decision, however, only provides a precedent for the Second Circuit. Few other regions have addressed whether wearable items are protected by the Copyright Act, and the one that has — the Fifth Circuit — arrived at a different interpretation of the separability clause.

The Fifth Circuit decision involved a copyright infringement case filed in the Eastern District of Louisiana. Jane Galiano, founder and owner of Gianna Inc., which designs clothing and professional uniforms, filed a lawsuit against Harrah's Operating Co. Inc. and Harrah's Entertainment Inc. Galiano alleged that Harrah's infringed on uniform designs she had done for the casino that included items such as vegetable-shaped chef hats and other distinctive pieces, according to court documents.

The Fifth District decision said "copyright protection would be available only for a design's artistic expression and not for the design of the clothing itself." In the Galiano case, the court concluded that the artistic and utilitarian elements of the design in question were not separable.

"The issue of the extent of protection of something that could be a piece of apparel is extraordinarily limited," said Jane Shay Wald, a partner and chair of the trademark practice group with Irell and Manella in Century City, Calif., as well as immediate past president of the Los Angeles Copyright Society. Most apparel companies seek the protection of trademark or trade dress protections, which are more established for clothing items. Decisions like the Chosun and Galiano cases might drive even more apparel manufacturers to take a close look at other intellectual property protections because the copyright law continues to be a challenge, Wald said.Without more explicit guidance on how to separate the function and the art of wearable items under the copyright law, lawyers are skeptical that the state of the issue will change.

"There isn't anything to be extrapolated from [the Chosun] decision. The independent protectability of independent components of garments isn't really changed by the fact that a mask, which is part of a costume, may be protectable," said Steven Gursky, partner, Dreier LLP, New York. Gursky was not involved in litigation of either the Chosun or the Galiano lawsuits. "The Supreme Court or Congress would have to step in and make a change to make garments more protectable."

For the Supreme Court to address a case, an application has to be filed, the vast majority of which are denied. To date, Handal said he was not aware that any applications on behalf of either the Chosun or the Galiano lawsuits have been made.

Some who deal with these questions of law are more optimistic that the attention given to the issue in these cases may help to move the issue forward and keep discussions about copyright protections for individual components of clothing open.

"We are moving toward a more careful evaluation of the nature of the clothing that people say is copyrightable," said George Gottlieb, an intellectual property attorney at Gottlieb, Rackman & Reisman P.C., New York, who was not involved in either case. The courts are moving in the direction of "looking at each such case and saying, ‘Can we find copyrightable elements here?'" he said.

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