Casino Costumes Not Copyrightable Because Elements Were Not Separately Marketable According to Fifth Circuit
Case Name: Jane Galiano and Gianna, Inc. v. Harrah's Operating Co., Inc., Case No. 04-30521, 04-30806 (5th Cir. July 7, 2005).
The One Sentence Summary: After reviewing various formulations of the test for copyrightability of useful items such as dress design, the Court found that costumes designed for Harrah's did not meet the requirement that such useful articles can only be copyrighted if the designs are shown to be separately marketable based on their artistic, rather than simply their utilitarian, features.
Note: This case represents a strikingly similar issue to that recently decided the other way by the Second Circuit in Chosun International, Inc. v. Chrisha Creations, Ltd., Docket No. 04-1975 (2nd Cir. 6/30/05) See our blog posting Elements of Halloween Costumes Subject to Copyright (7/5/05).
In 1999, Gianna received copyright registration for a collection of sketches for uniforms and costumes submitted to Harrah's pursuant to a design consulting agreement in 1995. After the design agreement expired, Gianna and Harrah's entered into a settlement agreement in 1996, purporting to settle all disputes between them. After receiving a copyright registration for the designs in 1999, however, Gianna sued for copyright infringement alleging that Harrah's continued to use and order Gianna-designed costumes in derogation of their settlement.
The court canvassed numerous variations in the current jurisprudence of "conceptual separability", examining various tests aimed at providing a methodology for courts to separate creative elements from industrial design features. See, e. g., Pivot Point Int'l Inc. v. Chalren Prods., Inc.,372 F. 3d 913, 920-21 (en banc) ( 7th Cir. 2004); Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., F.3d 488, 494 (4th Cir. 1996); Masquerade Novelty Inc. v. Unique Inds., Inc., 912 F.2d 663, 670 (3d Cir. 1990) ;Keiselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980), Norris Indus. Inc. v. Int'l Tel & Tel Corp., 696 F.2d 918, 923 (11th Cir. 1983). The Court then concluded that NIMMER ON COPYRIGHT presented the most cogent discussion of copyright protection for clothing, by dividing the designs into fabric designs and dress designs. Of the two, Nimmer concluded that fabric designs are generally copyightable and dress designs are not, since fabric designs could be marketable as art but clothing generally could not. See Section 2.08[B][3] at 2-101. (Opinion p. 9).
The Court noted that, however, that costumes are somewhat unique, having sometimes, but not always, been found copyrightable. Thus in Poe v. Missing Persons, 745 F. 2d 1238 (9th Cir. 1984), the Court awarded copyright protection to a swimsuit design that was so elaborately crafted it had little chance of being worn. In Kieselstein-Cord supra., the Court determined that belt buckles contained artistic elements that were conceptually separable despite the buckles' utilitarian function. 632 F. 2 at 993. (Noting the buckle existed on the "cutting edge" of copyright law.")
In this case, the Fifth Circuit adopted what it deemed a "likelihood of marketability standard" whereby copyrightability would be based on a showing that the designs were marketable as applied art, not simply as garments. Under this test, the Court found Gianna had made no showing that its designs "were marketable independently of their utilitarian function as casino uniforms." (Opinion p.12) On this basis, the Court affirmed summary judgment in favor of Harrah's.
The One Sentence Summary: After reviewing various formulations of the test for copyrightability of useful items such as dress design, the Court found that costumes designed for Harrah's did not meet the requirement that such useful articles can only be copyrighted if the designs are shown to be separately marketable based on their artistic, rather than simply their utilitarian, features.
Note: This case represents a strikingly similar issue to that recently decided the other way by the Second Circuit in Chosun International, Inc. v. Chrisha Creations, Ltd., Docket No. 04-1975 (2nd Cir. 6/30/05) See our blog posting Elements of Halloween Costumes Subject to Copyright (7/5/05).
In 1999, Gianna received copyright registration for a collection of sketches for uniforms and costumes submitted to Harrah's pursuant to a design consulting agreement in 1995. After the design agreement expired, Gianna and Harrah's entered into a settlement agreement in 1996, purporting to settle all disputes between them. After receiving a copyright registration for the designs in 1999, however, Gianna sued for copyright infringement alleging that Harrah's continued to use and order Gianna-designed costumes in derogation of their settlement.
The court canvassed numerous variations in the current jurisprudence of "conceptual separability", examining various tests aimed at providing a methodology for courts to separate creative elements from industrial design features. See, e. g., Pivot Point Int'l Inc. v. Chalren Prods., Inc.,372 F. 3d 913, 920-21 (en banc) ( 7th Cir. 2004); Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., F.3d 488, 494 (4th Cir. 1996); Masquerade Novelty Inc. v. Unique Inds., Inc., 912 F.2d 663, 670 (3d Cir. 1990) ;Keiselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980), Norris Indus. Inc. v. Int'l Tel & Tel Corp., 696 F.2d 918, 923 (11th Cir. 1983). The Court then concluded that NIMMER ON COPYRIGHT presented the most cogent discussion of copyright protection for clothing, by dividing the designs into fabric designs and dress designs. Of the two, Nimmer concluded that fabric designs are generally copyightable and dress designs are not, since fabric designs could be marketable as art but clothing generally could not. See Section 2.08[B][3] at 2-101. (Opinion p. 9).
The Court noted that, however, that costumes are somewhat unique, having sometimes, but not always, been found copyrightable. Thus in Poe v. Missing Persons, 745 F. 2d 1238 (9th Cir. 1984), the Court awarded copyright protection to a swimsuit design that was so elaborately crafted it had little chance of being worn. In Kieselstein-Cord supra., the Court determined that belt buckles contained artistic elements that were conceptually separable despite the buckles' utilitarian function. 632 F. 2 at 993. (Noting the buckle existed on the "cutting edge" of copyright law.")
In this case, the Fifth Circuit adopted what it deemed a "likelihood of marketability standard" whereby copyrightability would be based on a showing that the designs were marketable as applied art, not simply as garments. Under this test, the Court found Gianna had made no showing that its designs "were marketable independently of their utilitarian function as casino uniforms." (Opinion p.12) On this basis, the Court affirmed summary judgment in favor of Harrah's.
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