No. 15-866
`
`In the
`Supreme Court of the United States
`
`STAR ATHLETICA, L.L.C.,
`
`Petitioner,
`
`v.
`
`VARSITY BRANDS, INC., et al.,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the Sixth CirCUit
`
`BRIEF OF FASHION LAW INSTITUTE
`ET AL. AS AMICI CURIAE IN SUPPORT
`OF RESPONDENTS
`
`susan scaFIdI
`JeFF trexler
`Mary K. Brennan
`FashIon law InstItute
`at FordhaM
`150 West 62nd Street
`New York, New York
`
`MIchelle MancIno Marsh
`Counsel of Record
`arent Fox llP
`1675 Broadway
`New York, New York 10019
`(212) 484-3900
`michelle.marsh@arentfox.com
`
`Counsel for Amici Curiae
`
`268177
`
`
`
`In the
`Supreme Court of the United States
`
`STAR ATHLETICA, L.L.C.,
`
`Petitioner,
`
`v.
`
`VARSITY BRANDS, INC., et al.,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the Sixth CirCUit
`
`BRIEF OF FASHION LAW INSTITUTE
`ET AL. AS AMICI CURIAE IN SUPPORT
`OF RESPONDENTS
`
`susan scaFIdI
`JeFF trexler
`Mary K. Brennan
`FashIon law InstItute
`at FordhaM
`150 West 62nd Street
`New York, New York
`
`MIchelle MancIno Marsh
`Counsel of Record
`arent Fox llP
`1675 Broadway
`New York, New York 10019
`(212) 484-3900
`michelle.marsh@arentfox.com
`
`Counsel for Amici Curiae
`
`268177
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES .................................... iii
`INTEREST OF AMICI CURIAE.............................. 1
`SUMMARY OF ARGUMENT .................................. 4
`ARGUMENT ............................................................. 6
`I. COPYRIGHT CURRENTLY OFFERS INCOMPLETE BUT
`CRUCIAL PROTECTION FOR BOTH EMERGING AND
`ESTABLISHED FASHION DESIGNERS ...................... 6
`A. Fashion is an Industry Essential to the U.S.
`Economy and American Culture ................... 7
`B. The Rise of the American Fashion Industry
`to Global Prominence Parallels the
`Application of Intellectual Property
`Protection to Some Elements of Creative
`Design ........................................................... 11
`C. Protection for Creative Fashion Designs
`Under U.S. Intellectual Property Law Still
`Lags Behind Other Prominent International
`Fashion Capitals, Harming Emerging and
`Established Designers ................................. 16
`D. Conceptual Separability in Copyright, and
`the Partial Protection It Provides Designers,
`is Critical to the Fashion Industry .............. 19
`II. FASHION IS AN INFORMATION-BEARING GOOD
`INCORPORATING EXPRESSION PROTECTABLE VIA
`THE CONCEPTUAL SEPARABILITY STANDARD ...... 21
`
`
`
`
`i
`
`
`
`
`
`
`
`A. The Existing Tests of Conceptual
`Separability Protect Expressive Elements of
`Fashion Design but Should Be Rationalized
`as a Standard Rather than an Additional
`Rule. ............................................................. 22
`B. The Definition of a “Useful Article” under the
`Copyright Act Includes Exceptions Related to
`Appearance and Information that Together
`Establish the Copyrightability of Expressive
`Elements of Fashion Designs ...................... 25
`C. This Court Should Adopt a Conceptual
`Separability Standard Not Only Consistent
`with the 6th Circuit’s Result But Also With
`Long-Established Protection for Certain
`Elements of Fashion Designs ...................... 33
`CONCLUSION ....................................................... 36
`
`
`
`ii
`
`
`
`
`
`
`
`TABLE OF AUTHORITIES
`
`
`Cases
`Chosun Int'l, Inc. v. Chrisha Creations, Ltd.,
`413 F.3d 324 (2d Cir. 2005)............................... 14
`Eve of Milady v. Impression Bridal, Inc.,
`957 F. Supp. 484 (S.D.N.Y. 1997) ..................... 14
`Folio Impressions, Inc. v. Byer California,
`937 F.2d 759 (2d Cir. 1991)............................... 14
`Galiano v. Harrah’s Operating Co.,
`416 F.3d 411 (5th Cir. 2005) ............................. 25
`Kieselstein-Cord v. Accessories by Pearl, Inc.,
`632 F.2d 989 (2d Cir. 1980)......................... 14, 19
`Mazer v. Stein,
`347 U.S. 201 (1954) ................................... passim
`On Davis v. The Gap, Inc.,
`246 F.3d 152 (2d Cir. 2001)......................... 19, 20
`Peter Pan Fabrics, Inc. v.
`Brenda Fabrics, Inc.,
`169 F. Supp. 142 (S.D.N.Y. 1959) ..................... 14
`Trifari, Krussman & Fishel, Inc. v.
`Charel Co.,
`134 F. Supp. 551 (S.D.N.Y. 1955) ..................... 19
`
`
`Statutes and Other Authorities
`U.S. Const. art. I, § 8, cl. 8 ....................................... 4
`17 U.S.C. § 101 ............................................... passim
`35 U.S.C. § 101 ....................................................... 26
`
`
`
`iii
`
`
`
`
`
`
`
`A Bill to Provide Protection for Fashion
`Design: Hearing on H.R. 5055 Before the
`Subcomm. on Courts, the Internet, and
`Intellectual Prop. of the H. Comm. on the
`Judiciary, 109th Cong. 11-12 (2006) ............ 3, 17
`A Bill to Provide Protection for Fashion
`Design: Hearing on H.R. 5055 Before the
`Subcomm. on Courts, the Internet, and
`Intellectual Prop. of the H. Comm. on the
`Judiciary, 109th Cong. 79 (2006) ....................... 3
`Britt Aboutaleb, Chanel Will Not Make its
`Pamela Love-Like Crystal Cuffs, ELLE
`(Mar. 13, 2012) .................................................. 20
`Bureau of Labor Statistics, U.S. Dep’t Of
`Labor, Occupational Outlook Handbook:
`Fashion Designers (2014-2015 ed.) .................. 16
`Charles James, Clover Leaf (1953) ........................ 30
`Claude E. Shannon & Warren Weaver, THE
`MATHEMATICAL
`THEORY
`OF
`COMMUNICATION (Univ. of Illinois Press
`1949) .................................................................. 24
`Danica Lo, Hannah Bernhard Says Iris Apfel
`Ripped Off Her Toucan Pin Design,
`RACKED (May 18, 2011) ..................................... 20
`Diane von Furstenberg, Fashion Deserves
`Copyright Protection, L.A. TIMES, Aug. 24,
`2007 ................................................................... 16
`Gucci, Look 14, Fall/Winter 2016 .......................... 31
`H.R. Rep. No. 94–1476 (1976) ............................ 6, 13
`
`
`
`iv
`
`
`
`
`
`
`
`Innovative Design Protection and Piracy
`Prevention Act: Hearing on H.R. 2511
`Before
`the Subcomm. on Intellectual
`Prop., Competition, and the Internet of the
`H. Comm. on the Judiciary, 112th Cong. 7
`(2011) ................................................................. 17
`Jeanne C. Fromer, An Information Theory of
`Copyright Law, 64 EMORY L.J. 71 (2014) ......... 32
`Jeremy Scott, Look 54, Spring 2017 ...................... 30
`Karen Van Godtsenhoven et al., FASHION
`GAME CHANGERS: REINVENTING THE 20TH-
`CENTURY SILHOUETTE (2016) ............................ 30
`Karen Yossman, Comic-Con Makes a
`Fashion Statement, THE NEW YORK TIMES
`(July 22, 2016) ................................................... 10
`Laird Borrelli-Persson, A First Look at the
`Met’s “Manus x Machina” Catalog, VOGUE
`(Apr. 6, 2016) ..................................................... 10
`Laura C. Marshall, Catwalk Copycats: Why
`Congress Should Adopt a Modified
`Version of the Design Piracy Prohibition
`Act, 14 J. INTELL. PROP. L. 305 (2007) ......... 16
`Matthew Sag, Predicting Fair Use, 73 Ohio
`St. L.J. 47 (2012) ............................................... 24
`“Mondrian” cheerleader apparel designed by
`Katie Graham in Toyota –Car Launch,
`BRAZEN HUSSY (April 27, 2010) ........................ 27
`Narciso Rodriguez and Susan Scafidi, Knock
`it off! Quashing design pirates, THE
`CHICAGO TRIBUNE (Aug. 29, 2010) ...................... 3
`
`
`
`v
`
`
`
`
`
`
`
`Pamela Samuelson, Unbundling Fair Uses,
`77 Fordham L. Rev. 2537 (2009) ...................... 24
`Piet Mondrian, Composition with Large Red
`Plane, Yellow, Black, Gray, and Blue
`(1921) ................................................................. 27
`Rei Kawakubo for Comme des Garçons,
`Spring 2017 ....................................................... 30
`Sup. Ct. R. 37.3(a)..................................................... 1
`Sup. Ct. R. 37.6 ......................................................... 1
`Susan Scafidi and Narciso Rodriguez,
`Fashion Designers Need Strong Legal
`Protection for Their Clothing, THE NEW
`YORK TIMES (October 22, 2015)........................... 3
`Susan Scafidi, F.I.T.: Fashion as Information
`Technology, 59 SYRACUSE L. REV. 69
`(2008) ................................................... 3, 6, 24, 29
`Susan Scafidi, Intellectual Property and
`Fashion Design,
`in 1 INTELLECTUAL
`PROPERTY AND INFORMATION WEALTH 115
`(Peter K. Yu ed., 2006) ........................ 3, 6, 13, 15
`The City’s Big NY Fashion Boost, COUNCIL OF
`FASHION DESIGNERS OF AM. (Dec. 2, 2015) ......... 8
`The Economic
`Impact of
`the Fashion
`Industry, Joint Econ. Comm., U.S. Cong.
`(Sep. 6, 2016) ................................................... 8, 9
`Thom Browne, Look 1, Spring 2017 ....................... 32
`
`vi
`
`
`
`
`
`
`
`
`
`
`
`Wearables Market to Be Worth $25 Billion by
`2019, CCS INSIGHT ............................................ 10
`Yves Saint Laurent, “Mondrian” day dress,
`The Metropolitan Museum of Art ..................... 27
`
`vii
`
`
`
`
`
`
`
`
`
`INTEREST OF AMICI CURIAE1
`Amici include the Fashion Law Institute joined
`by the following scholars, educators, award-winning
`fashion designers,
`industry
`executives, and
`business owners, all of whom have played a leading
`role in the fashion industry’s efforts to address
`issues relating to intellectual property protection
`over the past decade and beyond:
`Jeffrey Banks
`Fashion Designer and Author
`Maria Cornejo and Marysia Woroniecka
`Creative Director / Founder and President,
`respectively
`Zero + Maria Cornejo
`Nathalie Doucet
`Founder, Arts of Fashion Foundation
`Keanan Duffty
`Fashion Designer
`Barry Kieselstein-Cord
`Artist, Designer, and Photographer
`Melissa Joy Manning
`Jewelry Designer
`
`1 Pursuant to Supreme Court Rule 37.3(a), all parties have
`consented to the filing of this brief. Pursuant to Rule 37.6,
`amici certify that no counsel for a party authored this brief in
`whole or in part, and no persons other than amici curiae or
`their counsel made a monetary contribution to its preparation
`or submission. Professor Susan Scafidi, Founder & Academic
`Director of the Fashion Law Institute, a nonprofit
`organization based at Fordham Law School, served as an
`expert witness for Respondents (then Plaintiffs) earlier in this
`case but did not and does not serve as counsel for a party.
`
`1
`
`
`
`
`
`Jack McCollough and Lazaro Hernandez
`Creative Directors and Founders
`Proenza Schouler
`Narciso Rodriguez
`Fashion Designer
`Professor Susan Scafidi
`Founder and Academic Director
`Fashion Law Institute at Fordham2
`The Fashion Law
`Institute, a nonprofit
`organization and the world’s first academic center
`dedicated to the law and business of fashion, was
`founded with the assistance of the Council of
`Fashion Designers of America and
`its then-
`president and current board chairman, Diane von
`Furstenberg, and is headquartered at Fordham
`Law School. Fashion law itself emerged as a
`distinct legal field through the work of Professor
`Susan Scafidi, one of the amici joining this brief in
`her personal capacity. Professor Scafidi’s research
`and engagement with the industry is also the
`primary source (with and without attribution) of
`leading arguments in favor of design protection,
`such as the need to protect emerging designers, the
`distortive effects of partial protection, the historical
`role of self-help, the problematic privileging of
`mimetic over transformational design, the cultural
`factors shaping limits on copyright protection, and
`
`
`2 The Fashion Law Institute’s affiliation with Fordham Law
`School is noted for information purposes only and does not
`necessarily reflect the point of view of the law school or the
`university.
`
`
`2
`
`
`
`
`
`the significance of statutory reform narrowly
`tailored to the industry.3
`Amici Jeffrey Banks, Lazaro Hernandez,
`Narciso Rodriguez, and Professor Scafidi have
`testified in Congress on the issue of intellectual
`property and fashion design,4 and fellow amici
`have shared their expertise and experience though
`
`3 See, e.g., Susan Scafidi, Intellectual Property and Fashion
`Design, in 1 INTELLECTUAL PROPERTY AND INFORMATION
`WEALTH 115 (Peter K. Yu ed., 2006)(available online at
`http://papers.ssrn.com/sol3/papers.cfm?abstract_id=1309735),
`[hereinafter Scafidi, Intellectual Property and Fashion
`Design]; A Bill to Provide Protection for Fashion Design:
`Hearing on H.R. 5055 Before the Subcomm. on Courts, the
`Internet, and Intellectual Prop. of the H. Comm. on the
`Judiciary, 109th Cong. 79 (2006) (statement of Professor
`Susan Scafidi)[hereinafter, Scafidi, Judiciary Committee
`statement]; Susan Scafidi, F.I.T.: Fashion as Information
`Technology, 59 SYRACUSE L. REV. 69 (2008) [hereinafter
`Scafidi, Fashion as Information Technology].
`4 See, e.g., A Bill to Provide Protection for Fashion Design:
`Hearing on H.R. 5055 Before the Subcomm. on Courts, the
`Internet, and Intellectual Prop. of the H. Comm. on the
`Judiciary, 109th Cong. 11-12 (2006) (statement of Jeffrey
`Banks, Fashion Designer, Council of Fashion Designers of
`America); see generally Narciso Rodriguez and Susan Scafidi,
`Knock it off! Quashing design pirates, THE CHICAGO TRIBUNE
`(Aug. 29, 2010), http://articles.chicagotribune.com/2010-08-
`29/opinion/ct-perspec-0829-fashion-20100829_1_design-maria-
`pinto-fashion; Susan Scafidi and Narciso Rodriguez, Fashion
`Designers Need Strong Legal Protection for Their Clothing,
`THE NEW YORK TIMES (October 22, 2015),
`http://www.nytimes.com/roomfordebate/2014/09/07/who-owns-
`fashion/fashion-designers-need-strong-legal-protection-for-
`their-clothing.
`
`3
`
`
`
`
`
`
`
`
`
`extensive public education efforts, intra-industry
`discussion with
`established
`and
`emerging
`designers, and related engagement with the
`Copyright Office, members of Congress on both
`sides of the aisle, and many others. In addition,
`various amici have designed and participated in
`educational programming for both students and
`professionals.
`We are extremely familiar on both a theoretical
`and a practical basis with the relationship between
`copyright and fashion designs under U.S. law, and
`our immediate concern is that the present case not
`upset over half a century of legal precedents relied
`upon by the fashion industry – including a well-
`known case won by amicus Barry Kieselstein-Cord
`– and diminish the already limited patchwork of
`intellectual property protection available to fashion
`designers.
`SUMMARY OF ARGUMENT
`Fashion is an information-bearing good, and the
`Copyright Act has long served “To promote the
`progress of…useful Arts” by protecting at least
`some of the original aesthetic and informational
`expressions that designers embody in their work.
`U.S. Const. art. I, §8, cl.8. We believe that the
`Court should affirm the result reached by the Sixth
`Circuit with regard to the copyrightability of
`Respondents’ designs, a result that is consistent
`with all of the various tests
`for conceptual
`separability identified by the panel below. The
`Court, however,
`should
`also
`clarify
`that
`separability is a flexible statutory standard that is
`best left unconstrained by maladaptive bright-line
`
`4
`
`
`
`
`
`rules or disparate treatment for fashion designs
`within the category of useful articles incorporating
`protectable expression.
`The justifications for this approach are both
`prudential and doctrinal. Since the Court issued its
`landmark ruling in Mazer v. Stein over sixty years
`ago, 347 U.S. 201 (1954), the Copyright Office and a
`series of influential precedents have established the
`copyrightability of physically and conceptually
`separable expressive design elements embodied in
`fabric prints, bridal lace, jewelry, belt buckles,
`costumes, and other forms of fashion design. In
`light of the limited scope of copyright protection
`traditionally recognized for fashion designs under
`U.S. law, the fashion industry has come to rely on
`this longstanding protection for separable elements
`of expressive design.
`is
`industry
`fashion
`This reliance by the
`consistent with the language and the logic of the
`Copyright Act itself. As the Court recognized long
`ago
`in Mazer and Congress
`confirmed
`in
`subsequent copyright reform, the Copyright Act is
`designed to encompass original expressive content
`regardless of the medium on which it is inscribed or
`the quality of its appearance or message. For
`protectable content embodied in useful articles,
`Congress enacted an adaptive standard that is
`intentionally open to context-sensitive
`judicial
`reasoning. The two-dimensional surface designs on
`articles of clothing worn by cheerleaders that are at
`issue in this case qualify for copyright protection
`under the statutory standard for separability, as do
`
`
`
`5
`
`
`
`
`
`countless other expressive design elements in
`fashion and other information-bearing goods.
`ARGUMENT
`I. COPYRIGHT CURRENTLY OFFERS INCOMPLETE
`BUT CRUCIAL PROTECTION FOR BOTH
`EMERGING AND ESTABLISHED FASHION
`DESIGNERS
`While the question presented in this case
`concerns
`the general copyright standard
`for
`protecting the separable elements of useful articles,
`the immediate subject of the dispute — fashion —
`is one that has long received disparate treatment
`within copyright
`law.5
` The district court’s
`discursion into “cheerleading-uniform-ness”6 in this
`cases exemplifies the law’s tendency to see what the
`legislative history of the Copyright Act tellingly
`refers to as “ladies’ dress”7 in a different light,
`unsuitable
`for the protections afforded other
`original works.
`Nevertheless, despite the all-too-common mis-
`characterization of fashion as a sector of the
`economy wholly outside copyright, the fashion
`industry itself has an extensive history of using the
`limited patchwork of available protection to become
`
`5 See, e.g., Scafidi, Intellectual Property and Fashion Design;
`Scafidi, Fashion as Information Technology.
`6 Varsity Brands, Inc. v. Star Athletica, LLC, No. 10-2508,
`2014 WL 819422, at *1 (W.D. Tenn. Mar. 1, 2014), vacated
`and remanded, 799 F.3d 468 (6th Cir. 2015), cert. granted in
`part sub nom. Star Athletica, L.L.C. v. Varsity Brands, Inc.,
`136 S. Ct. 1823, 194 L. Ed. 2d 829 (2016).
`7 H.R.Rep. No. 94–1476, at 55 (1976), reprinted in 1976
`U.S.C.C.A.N. 5659, 5668.
`
`
`6
`
`
`
`
`
`a global leader in design. This section examines
`how U.S. fashion, from emerging designers to
`established brands, has come to rely on separability
`as an integral part of its strategy for continued
`growth.
`A. Fashion is an Industry Essential to the
`U.S. Economy and American Culture
`Over the past century, the fashion industry in
`the United States has undergone a major
`transition. What was once a provincial backwater
`known primarily for sweatshop manufacturing and
`knockoffs of European designs is now an economic
`powerhouse fueled by original creative works, and
`as the Respondent in this case illustrates, the
`industry’s scope extends far beyond high-priced
`luxury couture. Sportswear, footwear, accessories,
`jewelry, denim, athletic apparel,
`swimwear,
`lingerie, bridal, even textiles themselves — the
`democratization of style in American culture in
`large part reflects the emergence of a multi-sector
`fashion business in which design is a primary
`driving force.
`The evolution of the fashion industry in New
`York City provides a striking case in point. The
`city’s early-to-mid-twentieth-century profusion of
`garment factories and stores hawking the latest
`copies of Parisian styles has given way to a new
`fashion economy: manufacturing accounts for only a
`little over eight percent of 98 billion dollars in total
`annual revenue, and the city is now home to
`hundreds of brands with their own original designs
`and signature styles. The twice-yearly New York
`Fashion Week alone has a local economic impact of
`
`7
`
`
`
`
`
`upwards of 900 million dollars a year and includes
`over 500
`shows,
`from
`recent design-school
`graduates and emerging designers from
`local
`fashion incubators to iconic small and medium-size
`enterprises
`to multi-billion-dollar
`companies.8
`Design education
`is another major presence;
`besides being the home of several leading design
`schools, including Parsons, Fashion Institute of
`Technology, and Pratt Institute, the city also has
`its own High School of Fashion Industries, a
`specialized public school were students study
`fashion design and create their own works.9
`New York, of course, is not the only city where
`fashion is having a substantial economic and social
`impact. A recent Congressional study noted that as
`of 2015
`the nation’s
`fashion
`industry was
`approaching $400 billion in annual sales, with
`localized fashion hubs extending beyond New York
`and Los Angeles to such cities as San Francisco,
`Columbus, Nashville, and Kansas City. Fashion
`design education has also taken root nationwide,
`with more than 200 postsecondary schools offering
`fashion programs.10
`across
`style
`Along with
`democratizing
`socioeconomic classes and creating opportunities for
`
`8 See The City’s Big NY Fashion Boost, COUNCIL OF FASHION
`DESIGNERS OF AM. (Dec. 2, 2015), https://cfda.com/news/the-
`citys-big-ny-fashion-boost.
`9 See The Economic Impact of the Fashion Industry, Joint
`Econ. Comm., U.S. Cong. (Sep. 6, 2016),
`http://www.jec.senate.gov/public/_cache/files/66dba6df-e3bd-
`42b4-a795-436d194ef08a/fashion---september-2016-final-
`090716.pdf.
`10 See id.
`
`
`8
`
`
`
`
`
`achievement among native-born U.S. citizens and
`immigrants alike, the fashion industry serves as a
`cultural influencer in other ways. For example,
`presenting a racially diverse runway has become an
`integral part of maintaining brand
`integrity;
`transgender and disabled models are featured in
`shows and advertisements; and in the mere three
`years since the Fashion Law Institute garnered
`international media attention for producing the
`first plus-size fashion show held in the tents at New
`York Fashion Week, size diversity at fashion shows
`is becoming routine.
`Reports estimating the size of the global fashion
`industry at approximately $1.75 trillion annually11
`and describing
`its cultural
`influence are,
`if
`anything, under-representative of its full reach.
`The scheduled date of the Court’s oral argument
`calls to mind two related and rapidly expanding
`sectors outside the realm of traditional fashion:
`Halloween costumes, which have become a multi-
`billion-dollar industry in the U.S.,12 and geek
`fashion. In the space of less than a decade, the
`mimetic amateur cosplay prominent in the fan
`culture of comics and science fiction has given rise
`to an emerging geek fashion industry, including
`designers who transform
`licensed pop-culture
`intellectual properties into original and often subtle
`designs suitable for everyday office and even
`courtroom. This summer’s Comic-Con International
`
`
`11 See id.
`12 See Halloween Headquarters, Nat’l Retail Fed’n,
`https://nrf.com/resources/consumer-data/halloween-
`headquarters.
`
`
`9
`
`
`
`
`
`in San Diego, an annual event attended by over
`150,000 people, showcased geek fashion and such
`innovative creations as the first wearable Lego
`dress.13
`
`
`3D-printed threeASFOUR dress, Spring 2016, as
`displayed in the Metropolitan Museum of Art’s “Manus
`x Machina” exhibit.14
` The emerging wearable technology sector,
`projected to reach $25 billion by the end of 2019,15
`and new production technologies like 3D-printing
`are pushing the boundaries of both form and
`
`13 See Karen Yossman, Comic-Con Makes a Fashion
`Statement, THE NEW YORK TIMES (July 22, 2016),
`http://www.nytimes.com/2016/07/22/fashion/comic-con-makes-
`fashion-her-universe.html.
`14 See Laird Borrelli-Persson, A First Look at the Met’s “Manus x
`Machina” Catalog, VOGUE (Apr. 6, 2016),
`http://www.vogue.com/13423848/manus-x-machina-costume-institute-
`chanel/.
`15 See Wearables Market to Be Worth $25 Billion by 2019,
`CCS INSIGHT, http://www.ccsinsight.com/press/company-
`news/2332-wearables-market-to-be-worth-25-billion-by-2019-
`reveals-ccs-insight.
`
`
`
`10
`
`
`
`
`
`function in fashion design. These innovations are
`expanding the ability of designers to create not only
`on the surface of the body but also in the space
`around the body, as well as to experiment with new
`informational and communicative functions within
`the realm of fashion. Among the many expressions
`of wearable tech is the smart denim collaboration
`between Google and Levi’s, named
`“Project
`Jacquard” after the revolutionary Jacquard loom
`and its punch-card programming system for the
`production of textile patterns, an invention that
`helped launch both the industrial revolution and
`the modern digital age.
`B. The Rise of the American Fashion
`Industry to Global Prominence Parallels
`the Application of Intellectual Property
`Protection to Some Elements of
`Creative Design
`Although protection for fashion designs under
`U.S. law is limited, one factor contributing to the
`American fashion industry’s emergence as a global
`leader was the judicial recognition of copyright
`protection for certain elements of creative design
`starting in the 1950s. Together with changes such
`as the opportunity created for U.S. designers by the
`shuttering of Parisian fashion houses during World
`War II, post-war American affluence, advances in
`technology that expanded manufacturers’ ability to
`produce sophisticated designs at lower costs, and
`the growth of a diverse textile and apparel sector
`including more
`ready-to-wear
`fashions,
`the
`extension of copyright protection to fabric prints
`and jewelry supported the expansion of a domestic
`
`
`
`11
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`
`design industry. To some extent the U.S. followed a
`pattern evident in other countries with recognized
`global fashion capitals.
` Just as the fashion
`industries in Paris, London, and Milan developed in
`tandem with design protection, the position of
`original designers in the U.S. fashion industry
`benefitted
`from
`the
`long-desired,
`albeit
`circumscribed, establishment of legal means for
`protecting at least some elements of their work.
`As is the case for most forms of intellectual
`property protection, the origins of legal protection
`of fashion are European and intended to support
`economically and culturally important creators and
`creative industries. The historical roots of copyright
`protection for the protection of creative design
`elements in the useful arts extend back to the
`beginning of the modern fashion industry in
`France, when, in the early 18th century, an
`ordinance in Lyons prohibited merchants and
`manufacturers from pirating the designs created by
`the city’s innovative silk weavers. Protection was
`subsequently extended
`throughout
`the entire
`country, and England,
`its commercial rival,
`followed suit with
`the enactment of
`legal
`protections for its own textile industry. The scope of
`European fashion design protection continued to
`expand with the rise of haute couture fashion
`houses
`in the 19th century. Along with the
`utilization of legal means of protecting their work,
`designers also combatted fashion piracy through
`self-help methods such as
`trade association
`standards and new technology, including Madeleine
`
`
`
`12
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`
`Vionnet’s integration of her identifying thumbprint
`into her label.16
`From a textile copyright perspective the United
`States was essentially a pirate nation until the
`mid-twentieth century, when the Supreme Court’s
`holding in Mazer v. Stein established that the
`artistic elements of manufactured works are
`eligible for design protection.17 As the Court
`expressly noted, patent and copyright protection
`were not mutually exclusive in regard to the same
`design,18 and as the Brief for Respondents in this
`case discusses in more detail, the Copyright Office
`subsequently recognized copyright protection for
`fabric designs.19 In doing so the Copyright Office set
`forth the standard that, through its incorporation
`into the Copyright Act of 1976, is at the heart of the
`issue presented in this case, namely, that “if the
`shape of a utility article incorporates features, such
`as artistic
`sculpture,
`carving,
`or pictorial
`representation, which can be identified separately
`and are capable of existing independently as a work
`of art,” these separable elements are eligible for
`copyright protection.20
`Although the House Report for the 1976 Act
`dismissed extending the scope of this protection to
`the shape of “ladies’ dress”21 — a late Mad-Men-era
`
`16 See Scafidi, Intellectual Property and Fashion Design, 116-
`117, 124.
`17 Mazer v. Stein, 347 U.S. 201 (1954).
`18 See id. at 217.
`19 See Respondent’s Br. 28.
`20 See 17 U.S.C. § 101.
`21 H.R.Rep. No. 94–1476, supra note 8 at 55.
`
`13
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`synecdoche for bodily covering regardless of gender
`— the fashion industry successfully relied on the
`fundamental principles of physical and conceptual
`separability
`to persuade courts
`to recognize
`copyright protection for certain aspects of fashion
`design, including textile patterns,22 bridal lace
`designs,23 jewelry and artistic accessories,24 and
`separable elements of masks and costumes.25 Many
`designers and fashion houses have also sought to
`secure protection by registering eligible designs.
`The Copyright Office
`regularly engages
`in
`conceptual separability analysis and has issued
`tens of thousands of registrations related to textiles
`and fashion; in 2014 alone, textile designers sought
`copyright registration of over 4,700 works described
`as textiles, fabric prints, or fabric designs.26
` In addition, the fashion industry has integrated
`other available modes of legal protection into its
`overall design strategy. Trademark and trade dress
`have been prominent features of countless designs
`for several decades, particularly among well-known
`brands, at times skewing the creative process away
`
`22 See, e.g., Folio Impressions, Inc. v. Byer California, 937 F.2d
`759 (2d Cir. 1991); Peter Pan Fabrics, Inc. v. Brenda Fabrics,
`Inc., 169 F. Supp. 142 (S.D.N.Y. 1959).
`23 See, e.g., Eve of Milady v. Impression Bridal, Inc., 957 F.
`Supp. 484 (S.D.N.Y. 1997).
`24 See, e.g., Kieselstein-Cord v. Accessories by Pearl, Inc., 632
`F.2d 989 (2d Cir. 1980). The successful plaintiff in this
`landmark case, Barry Kieselstein-Cord, is a signatory to this
`brief.
`25 See, e.g., Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413
`F.3d 324 (2d Cir. 2005).
`26 Based on a search of the public catalog of the U.S.
`Copyright Office, available at http://copyright.gov.
`
`14
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`
`from more original work and slowing the progress
`of design evolution in a bid to ward off piracy.
`Design and utility patents have also become a part
`of many companies’ defensive arsenal, although, as
`in the Mazer era, patent protection remains
`inadequate for many designs and designers due to
`its
`expense,
`lengthy prior
`review process,
`procedural complexity, and high novelty standard.27
`As amici can personally attest, the
`legal
`protection available to designers and
`fashion
`houses – for all its gaps and imperfections – is a
`significant part of business models and design
`strategies
`throughout
`the
`industry, and
`the
`recognition of the applicability of copyright to
`separable design features for over half a century
`has been particularly useful. Redefining this right
`such that copyright would not extend even to an
`easily identifiable two-dimensional design capable
`of existing in wide range of media would have a
`decidedly negative
`impact
`on
`the
`fashion
`community, which has come to rely on whatever
`predictable protection it can find.
`
`
`
`
`27 See Mazer, supra note 20, at 216; see also Scafidi,
`Intellectual Property and Fashion Design, supra note 2, at
`122. Although patent law can play a role in the protection of
`fashion, the requirements of novelty, utility, and
`nonobviousness along with the amount of time required to
`obtain a patent and the expense of prosecuting one make this
`form of protection impractical if not impossible.
`
`
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`15
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`C. Protection for Creative Fashion Designs
`Under U.S. Intellectual Property Law
`Still Lags Behind Other Prominent
`International Fashion Capitals,
`Harming Emerging and Established
`Designers
`Efforts by designers and brands to protect their
`designs reflect the significant investment of time
`and money in creative work. Far from being an
`endless cycle of repeated tropes, fashion advances
`through innovation, and true innovation is rarely
`inexpensive. A single design can take upwards of a
`year to develop into a marketable product, and
`creating new collections according to the relentless
`schedule of the fashion calendar is like launching a
`new business several times a year. Design pirates
`trade on this investment without the attendan
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