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 COUNCIL OF FASHION
`DESIGNERS OF AMERICA, INC. AS AMICUS
`CURIAE IN SUPPORT OF RESPONDENTS
`
`AlAIn CoblenCe
`CoblenCe & AssoCIAtes
`200 Park Avenue South, Suite 511
`New York, New York 10003
`
`JustIn J. KrAne
`232 East 12th Street, 6th Floor
`New York, New York 10003
`
`ChArles e. boulbol
`Counsel of Record
`ChArles e. boulbol, P.C.
`26 Broadway, 17th Floor
`New York, New York 10004
`rtrack@msn.com
`
`Counsel for Amicus Curiae
`
`267631
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`
`
`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 COUNCIL OF FASHION
`DESIGNERS OF AMERICA, INC. AS AMICUS
`CURIAE IN SUPPORT OF RESPONDENTS
`
`AlAIn CoblenCe
`CoblenCe & AssoCIAtes
`200 Park Avenue South, Suite 511
`New York, New York 10003
`
`JustIn J. KrAne
`232 East 12th Street, 6th Floor
`New York, New York 10003
`
`ChArles e. boulbol
`Counsel of Record
`ChArles e. boulbol, P.C.
`26 Broadway, 17th Floor
`New York, New York 10004
`rtrack@msn.com
`
`Counsel for Amicus Curiae
`
`267631
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`
`
`i
`
`TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . . i
`
`TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . . iii
`
`INTEREST OF AMICUS CURIAE . . . . . . . . . . . . . . . .1
`
`SUMMARY OF ARGUMENT . . . . . . . . . . . . . . . . . . . . .2
`
`ARGUMENT. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`I. Well-Established Copyright Protection
`is Vital to the Continued Growth of the
`United States Fashion Industry and
`Fashion Design Innovation . . . . . . . . . . . . . . . . . .3
`
`
`
`A. The United States Has Become a
` World Leader in Fashion Design . . . . . . . . .3
`
`B. Fashion Design Piracy Threatens
`
`Innovation. . . . . . . . . . . . . . . . . . . . . . . . . . . . .5
`
`II. Absent Copyright Protection, Fashion
`Designers Lack an Adequate Alternative
`Means of Legal Recourse to Protect
`Original Designs from Copyists . . . . . . . . . . . . .12
`
`
`
`A. Copyright Protection . . . . . . . . . . . . . . . . . .14
`
`B. Trademark and Trade Dress Law . . . . . . .15
`
`TABLE OF CONTENTS
`
`Page
`
`
`
`ii
`
`C. Design Patents . . . . . . . . . . . . . . . . . . . . . . .16
`
`III. This Court Should Reject Petitioner’s
`
`Proposed Separability “Test” . . . . . . . . . . . . . . .17
`
`CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .18
`
`Table of Contents
`
`Page
`
`
`
`iii
`
`CASES
`
`Animal Fair, Inc. v. AMFESCO Indus., Inc.,
`
`620 F. Supp. 175, 187–88 (D. Minn. 1985),
` aff’d sub nom. Animal Fair v. Amfesco Indus.,
`
`794 F.2d 678 (8th Cir. 1986). . . . . . . . . . . . . . . . . . . . .14
`
`Eve of Milady v. Impression Bridal, Inc.,
`
`957 F. Supp. 484 (S.D.N.Y. 1997) . . . . . . . . . . . . . . . .14
`
`Fashion Originators Guild v. FTC,
`114 F.2d 80 (2d Cir. 1940), aff’d, 312 U.S. 457,
`
`
`61 S. Ct. 703, 85 L. Ed. 949 (1941) . . . . . . . . . . . . . . .14
`
`Folio Impressions, Inc. v. Byer Cal.,
`
`937 F.2d 759 (2d Cir. 1992) . . . . . . . . . . . . . . . . . . . . .14
`
`Kieselstein-Cord v. Accessories by Pearl, Inc.,
`
`632 F.2d 989 (2d Cir. 1980) . . . . . . . . . . . . . . . . . . . . .14
`
`Knitwaves, Inc. v. Lollytogs Ltd.,
`
`71 F.3d 996 (2d Cir. 1995) . . . . . . . . . . . . . . . . . . . . . .14
`
`Mazer v. Stein,
`
`347 U.S. 201 (1954) . . . . . . . . . . . . . . . . . . . . . . . 3, 14, 17
`
`Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc.,
`
`169 F. Supp. 142 (S.D.N.Y. 1959). . . . . . . . . . . . . . . . .15
`
`Scarves by Vera, Inc. v. United Merchs. & Mfrs.,
`
`173 F. Supp. 625 (S.D.N.Y. 1959). . . . . . . . . . . . . . . . .15
`
`TABLE OF CITED AUTHORITIES
`
`Page
`
`
`
`iv
`
`Trovata, Inc. v. Forever 21, Inc.,
` No. 07-CV-01196 (C.D. Cal. Oct. 15, 2007) . . . . . . . .10
`
`Whimsicality, Inc. v. Rubie’s Costume Co.,
`
`891 F.2d 452 (2d Cir. 1989) . . . . . . . . . . . . . . . . . . . . .14
`
`STATUTES AND OTHER AUTHORITIES
`
`17 U.S.C. § 106(2). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .11
`
`35 U.S.C. § 171 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`35 U.S.C. § 172 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`35 U.S.C. § 173 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`A Bill To Provide Protection for Fashion Design:
`Hearing Before the Subcomm. on the Courts, the
`Internet, and Intellectual Prop. of the H. Comm.
`on the Judiciary, 109th Cong. (2006) . . . . . . . . . . . . .6
`
`
`
`Amy Kover, That Looks Familiar. Didn’t
`
`I Design It?, N.Y. Times, June 19, 2005. . . . . . . . . . . .9
`
`Amy L. Landers, The Anti-Economy of Fashion:
`An Openwork Approach to Intellectual
`Property Protection, 24 Fordham Intell.
` Prop. Media & Ent. L.J. 427 (2004). . . . . . . . . . . . . . .9
`
`Bureau of Labor Statistics, U.S. Department
`of Labor, Occupational Outlook Handbook,
`2016-17 Edition, Fashion Designers . . . . . . . . . . . . . .5
`
`
`
`Cited Authorities
`
`Page
`
`
`
`v
`
`Design Law – Are Special Provisions Needed to
`Protect Unique Industries: Hearing Before
`the Subcomm. on the Courts, the Internet,
`and Intellectual Prop. Of the H. Comm on the
` Judiciary, 110th Cong. (Feb 14, 2008). . . . . . . . . . .8, 9
`
`Dhani Mau, How Much It Costs to Show at New York
` Fashion Week, Fashionista (Feb. 5, 2014). . . . . . . . . .9
`
`Eric Wilson, Before Model Can Turn Around,
` Knockoffs Fly, N.Y. Times, Sept. 4, 2007 . . . . . . . . . .6
`
`Innovative Design Protection and Piracy
`Prevention Act: Hearing on H.R. 2511 Before the
`H. Subcomm. on Intellectual Prop., Competition,
` & the Internet, 112th Cong. (2011). . . . . . . . . .6, 7, 8, 12
`
`Joint Econ. Comm., 114th Cong., The Economic
`
`Impact of the Fashion Industry (Sept. 2015). . . . .4, 5
`
`Joint Econ. Comm., 114th Cong., The New
` Economy of Fashion (Feb. 2016) . . . . . . . . . . . . .3, 4, 5
`
`Katelyn N. Andrews, The Most Fascinating Kind of
`Art: Fashion Design Protection As A Moral Right,
`2 NYU J. Intell. Prop. & Ent. L. 188 (2012) . . . . . . . .4
`
`
`
`Lauren Indvik, Why Patent-Holding Designs Still
`Get Knocked Off: A Case Study with Alexander
` Wang, Fashionista (Dec. 18, 2013) . . . . . . . . . . . . . . .16
`
`Cited Authorities
`
`Page
`
`
`
`vi
`
`Press Release, 752,995 Visitors to Costume
`Institute’s Manus x Machina Make It the
`7th Most Visited Exhibition in The Met’s
` History (Sept. 6, 2016). . . . . . . . . . . . . . . . . . . . . . . . . .3
`
`Press Release, The Metropolitan Museum
`of Art, The Met Extends Hours for Final
`Weekend of Manus x Machina: Fashion
`in the Age of Technology (Aug. 25, 2016). . . . . . . . . . .3
`
`
`
`Silvia Beltrametti, Evaluation of the Design Piracy
`Prohibition Act: Is the Cure Worse than the
`Disease? An Analogy with Counterfeiting and
`a Comparison with the Protection Available
`in The European Community, 8 Nw. J. Tach.
` & Intell. Prop. 147 (Spring 2010) . . . . . . . . . . 12-13, 15
`
`Sup. Ct. R. 37.6 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
`
`Tedmond Wong, To Copy or Not to Copy,
`That Is the Question: The Game Theory
`Approach to Protecting Fashion Designs, 160
` U. Pa. L. Rev. 1139 (2012) . . . . . . . . . . . . . . . . . . . . . .13
`
`Trademark Counterfeiting Act of 1984, Pub. L. No.
`
`98-473, Tit. II, § 1502(a), 98 Stat. 2178 (1984). . . . . .15
`
`United States Copyright Office, Fees . . . . . . . . . . . . . . .13
`
`U.S. Patent & Trademark Office, Performance
`and Accountability Report Fiscal Year 2015
`(2015) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16
`
`
`
`Cited Authorities
`
`Page
`
`
`
`1
`
`INTEREST OF AMICUS CURIAE1
`
`The Council of Fashion Designers of America, Inc.
`(“CFDA”) is a not-for-profit trade association whose
`membership consists of over 500 of America’s foremost
`fashion and accessory designers as well as many newer
`and smaller designers.
`
`Founded in 1962, the CFDA’s goals are to further
`the position of fashion design as a recognized branch of
`American art and culture, to advance its artistic and
`professional standards, to establish and maintain a code
`of ethics and practices of mutual benefit in professional,
`public, and trade relations, and to promote and improve
`public understanding and appreciation of the fashion arts
`through leadership in quality and taste. In furtherance
`of the CFDA’s mission to strengthen the impact of
`American fashion in the global economy, the CFDA
`provides educational and professional development
`programming, hosts the annual CFDA Fashion Awards,
`presenting awards for design excellence in recognition
`of outstanding contributions made to American fashion.
`The CFDA also fosters emerging American design talent
`through design school scholarships, the CFDA’s Fashion
`Incubator, as well as the CFDA/Vogue Fashion Fund,
`which was established in 2003 to provide recipients with
`significant financial awards and business mentoring.
`
`1. Pursuant to Supreme Court Rule 37.6, amicus curiae affirms
`that no counsel for a party authored this brief, in whole or in part,
`and that no person or entity other than amicus curiae, its members,
`or its counsel made a monetary contribution to its preparation or
`submission. Both Petitioner and Respondent consented to the filing
`of amicus briefs.
`
`
`
`2
`
`The CFDA’s members have a strong interest in the
`issues presented in this case. The ultimate decision of
`this Court will have a broad-reaching effect on fashion
`designers and their creative endeavors.
`
`SUMMARY OF ARGUMENT
`
`The Sixth Circuit’s holding reaffirms the well-
`established rule extending copyright protection to original
`two-dimensional designs appearing on useful articles.
`While the CFDA acknowledges that clothing and most
`apparel are not eligible for copyright protection, the ever-
`growing numbers of American fashion designers depend
`upon copyright protection of their original designs. The
`copyrightability framework endorsed by Petitioner Star
`Athletica, L.L.C. (“Petitioner”), and its amici, on the
`other hand, would have a swift and deleterious effect on
`United States fashion industry, leaving fashion designers
`defenseless against copyists and, thus, undermining
`their incentive and ability to continue pursuit of creating
`innovative, original designs. The CFDA, therefore, urges
`this Court to affirm the Sixth Circuit’s decision in favor
`of Respondents.
`
`
`
`3
`
`ARGUMENT
`
`I. Well-Established Copyright Protection is Vital to
`the Continued Growth of the United States Fashion
`Industry and Fashion Design Innovation
`
`A. The United States Has Become a World Leader
`in Fashion Design
`
`“It is clear Congress intended the scope of the
`copyright statute to include more than the traditional fine
`arts.” Mazer v. Stein, 347 U.S. 201, 213 (1954). In the more
`than seventy years since Mazer, fashion has grown into
`a multi-trillion dollar global industry and fashion design
`has risen to the status of fine art.2 See Joint Econ. Comm.,
`114th Cong., The New Economy of Fashion, 1 (Feb. 2016)
`(“New Economy of Fashion”). Americans spend nearly
`$370 billion annually on apparel and footwear, and the U.S.
`fashion industry—including retailers, manufacturers,
`designers, marketing, specialized media, transportation,
`
`2. Indeed, three of the top ten most visited exhibitions in
`the 146-year history of The Metropolitan Museum of Art focused
`on fashion design: Alexander McQueen: Savage Beauty attracted
`661,509 visitors in 2011; China: Through the Looking Glass attracted
`815,992 visitors in 2015; and this year’s exhibition, Manus x Machina:
`Fashion in an Age of Technology brought in 752,995 visitors. See
`Press Release, The Metropolitan Museum of Art, The Met Extends
`Hours for Final Weekend of Manus x Machina: Fashion in the Age
`of Technology (Aug. 25, 2016), available at http://www.metmuseum.
`org/press/news/2016/manus-x-machina-final-hours; Press Release,
`752,995 Visitors to Costume Institute’s Manus x Machina Make It
`the 7th Most Visited Exhibition in The Met’s History (Sept. 6, 2016),
`available at http://www.metmuseum.org/press/news/2016/manus-x-
`machina-final-attendance.
`
`
`
`4
`
`and wholesalers—employs more than 1.8 million people in
`the United States. See New Economy of Fashion, supra,
`at 1.
`
`Perhaps even more dramatic than the growth of the
`U.S. fashion industry is the U.S. industry’s shift over
`the past century from manufacturing to design—from
`an importer of design to exporter. In 1931, New York’s
`Garment District boasted the highest concentration of
`clothing manufacturers in the world. “Many of these jobs
`have since moved offshore, [most dramatically] [o]ver the
`past quarter-century, [as] U.S. employment in the apparel
`manufacturing industry has declined sharply, from almost
`940,000 in 1990 to about 143,000 in 2014.” Joint Econ.
`Comm., 114th Cong., The Economic Impact of the Fashion
`Industry, 1 (Sept. 2015).
`
`During this same period, the United States has grown
`into a “world leader in fashion design, rivaling other major
`international hubs like Paris, Milan and London.” New
`Economy of Fashion, supra, at 1. “[A]t the heart of the
`industry’s creative process” and fueling its recent growth
`are the nearly 18,000 fashion designers working in the
`United States, whose numbers have grown by almost 50%
`in the past ten years alone. Id. Long gone are the days
`when “American designers were regarded as anonymous
`craftsmen who used their sartorial skills to copy Parisian
`designs for the American consumer.” Katelyn N. Andrews,
`The Most Fascinating Kind of Art: Fashion Design
`Protection As A Moral Right, 2 NYU J. Intell. Prop. &
`Ent. L. 188, 209 (2012). While many are familiar only
`with the most famous and successful names in fashion—
`Diane Von Furstenberg, Calvin Klein, Ralph Lauren, et
`al.—the median annual wage for fashion designers was
`
`
`
`5
`
`$63,670 in May 2015. See Bureau of Labor Statistics, U.S.
`Department of Labor, Occupational Outlook Handbook,
`2016-17 Edition, Fashion Designers, available at http://
`www.bls.gov/ooh/arts-and-design/fashion-designers.htm.
`
`Fashion design is a burgeoning and highly competitive
`profession, requiring advanced degrees and training.
`Currently, more than 200 postsecondary schools across
`the country offer fashion-related programs and prepare
`students for jobs in the fashion industry. See Joint Econ.
`Comm., 114th Cong., The Economic Impact of the Fashion
`Industry, 4 (Sept. 2015).
`
`B. Fashion Design Piracy Threatens Innovation
`
`Changes in technology, such as robotic manufacturing,
`digital photography and video, 3D printing, and
`the explosion in e-commerce, have opened up new
`opportunities for smaller, less-established designers
`and brands. New Economy of Fashion, supra, at 10.
`While such technological innovations have spurred the
`burgeoning numbers of independent fashion designers,
`such technology leaves them increasingly vulnerable to
`copying by “fast-fashion” retailers and manufacturers,
`able to produce high-volume, low-cost, line-for-line
`duplicates of original designs that often enter the market
`weeks, even months, before the originals.
`
`While copying in fashion is not a new problem, over
`the past twenty-five years, new technologies have allowed
`for copying at a greater scale, lower costs, and increasing
`speed. As one designer explained: “Digital photographs
`from a runway show in New York or a red carpet in
`Hollywood can be uploaded to the Internet within
`
`
`
`6
`
`minutes, the 360 degrees images viewed at a factory in
`China, and copies offered for sale online within days—
`months before the designer is able to deliver the original
`garments to stores.” Innovative Design Protection and
`Piracy Prevention Act: Hearing on H.R. 2511 Before
`the H. Subcomm. on Intellectual Prop., Competition, &
`the Internet, 112th Cong. 4-5 (2011) (Statement of Lazaro
`Hernandez, designer and co-founder of Proenza Schouler).
`
`For many fast-fashion copyists, brazen piracy has
`become their business model. As Seema Anand, owner of
`Simonia Fashions, freely told the New York Times, “If I
`see something on Style.com, all I have to do is e-mail the
`picture to my factory and say, ‘I want something similar,
`or a silhouette made just like this,’” and “[t]he factory, in
`Jaipur, India, can deliver stores a knockoff months before
`the designer version.” Eric Wilson, Before Model Can
`Turn Around, Knockoffs Fly, N.Y. Times, Sept. 4, 2007, at
`A1. “At the factory in Jaipur the company contracts with
`2,000 workers who specialize in pattern making, design
`and tailoring, and are equipped with computer programs
`that approximate the design of a garment from a Web
`image without the need to pull apart the seams.” Id. Not
`only can such companies beat an original design to market,
`but their low-cost, high-scale, rapid copying model affords
`them the ability to “simply target creative designers
`most successful models.” A Bill To Provide Protection
`for Fashion Design: Hearing Before the Subcomm. on
`the Courts, the Internet, and Intellectual Prop. of the H.
`Comm. on the Judiciary, 109th Cong. 79 (2006) (statement
`of Susan Scafidi, Visiting Professor, Fordham Law School,
`Associate Professor, Southern Methodist University)
`
`
`
`7
`
`Should the scope of copyright protection be further
`limited, as argued by the Petitioner here, the most severe
`consequences would befall emerging fashion designers
`“who every day lose orders and potentially [their] entire
`businesses.” See Innovative Design Protection and
`Piracy Prevention Act: Hearing on H.R. 2511 Before
`the H. Subcomm. on Intellectual Prop., Competition, &
`the Internet, 112th Cong. 14 (2011) (Testimony of Lazaro
`Hernandez, designer and co-founder of Proenza Schouler)
`(“Hernandez Testimony”).
`
`Emerging designers do not have the advantages
`[of more established famous fashion firms].
`Their products are not well enough recognized
`to qualify for trademark or trade dress
`protection, nor do they have the money to
`advertise and reinforce their brand image.
`But what these designers do have to offer
`consumers is their innovative designs. They
`cannot command the same prices as the famous
`luxury firms. Thus, emerging designers are
`more likely to be in competition with their
`copyists as their consumer bases are more likely
`to overlap. A design that retails for hundreds
`instead of thousands is within the reach of
`many consumers who might well opt for the
`still less expensive knockoff. Thus, knockoffs
`are particularly devastating for emerging and
`mid-range designers who face significant entry
`barriers and struggle to stay in business.
`
`Innovative Design Protection and Piracy Prevention
`Act: Hearing on H.R. 2511 Before the H. Subcomm. on
`Intellectual Prop., Competition, & the Internet, 112th
`
`
`
`8
`
`Cong. 14 (2011) (Testimony of Jeannie Suk, Professor Law,
`Harvard Law School).
`
`As with other creative industries, fashion design
`involves a substantial investment of money and time.
`Fashion design, as characterized by fashion designer
`Narciso Rodriguez, “is an art that must be learned, just
`like painting, sculpting, or writing”:
`
`It took nearly $50,000 in loans and three years
`to get my degree from the Parsons School of
`Design in New York. My parents couldn’t afford
`my tuition, so I took out school loans to pay
`the $15,000 a year. Today Tuition is $32,000.
`After graduating, fashion designers usually
`train as apprentices.… [Only after] years as
`an apprentice and designing for someone else,
`I started my own company in 1998.
`
`See Design Law – Are Special Provisions Needed to
`Protect Unique Industries: Hearing Before the Subcomm.
`on the Courts, the Internet, and Intellectual Prop. Of
`the H. Comm on the Judiciary, 110th Cong. 22 (Feb 14,
`2008) (Statement of fashion designer Narciso Rodriguez)
`(“Rodriguez Statement”).
`
`For those independent designers fortunate enough
`to have established their own business, each collection
`requires an even greater investment of financial capital
`and creative toil:
`
`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 workroom that
`
`
`
`9
`
`develops the patterns and garments another
`$1,500,000. The travel budget for design and
`fabric development is $350,000 and marketing
`is another $2,500,000.3
`
`Rodriguez Statement, supra, at 22.4 Original fashion
`design further entails the cost of trial and error, involving
`various creative choices and experimentation regarding
`the materials and construction of a piece of clothing.
`
`Copyists, in contrast, by avoiding the costs and
`risks of design, earn huge profits by selling their high-
`volume pirated designs at a discount to the original. The
`availability of these discounted copies results in a market
`reduction in sales of the original. See, e.g., Amy Kover,
`That Looks Familiar. Didn’t I Design It?, N.Y. Times,
`June 19, 2005, § 3, at 34 (describing accessory designer’s
`drop in monthly revenue from $50,000 to $10,000, following
`release of imitation). Examples of such piracy abound.
`When Narciso Rodriguez designed the wedding gown
`worn by Carolyn Bessette Kennedy in 1996, the dress
`became one of the most copied of the following decade.
`While “pirates sold around 7 million or 8 million copies
`[of the dress],” Rodriguez has stated, “I sold 40.” See
`Rodriguez Statement, supra, at 22.
`
`3. Cf. Dhani Mau, How Much It Costs to Show at New York
`Fashion Week, Fashionista (Feb. 5, 2014) (estimating that $200,000
`as reasonable cost to produce fashion shows at New York’s Fashion
`Week), http://fashionista.com/2014/02/new-york-fashion-week-cost.
`
`4. See also, Amy L. Landers, The Anti-Economy of Fashion:
`An Openwork Approach to Intellectual Property Protection,
`24 Fordham Intell. Prop. Media & Ent. L.J. 427, 489-98 (2004)
`(describing and collecting examples of expenses related to starting
`a fashion line).
`
`
`
`10
`
`ILLUS. 1. Top Row: Copied designs at issue in Trovata,
`Inc. v. Forever 21, Inc., No. 07-CV-01196 (C.D. Cal. Oct.
`15, 2007). Bottom Row: Original designs from Trovata.
`(available at http://nymag.com/thecut/2009/10/trovatas_
`suit_against_forever.html (last visited Sept. 15, 2016)).
`
`
`
`11
`
`ILLUS. 2. Left: Diane von Furstenberg original design.
`Right: Dress from Forever 21. (available at http://jezebel.
`com/5822762/how-forever-21-keeps-getting-away-with-
`designer-knockoffs (last visited Sept. 20, 2016)).
`
`Under Petitioner’s proposed approach to copyright
`protection, fashion designers would be additionally
`deprived of rights in derivative works. See 17 U.S.C.
`§ 106(2) (giving the individual the right to “prepare
`derivative works based on copyrighted work”). While
`designers may develop a name for themselves through
`high-end collections, selling in low volume at a high price,
`“the designer never recoups development costs for the
`
`
`
`12
`
`designs because he or she sells so few garments.” See
`Hernandez Testimony, supra. In fact, fashion designers
`often are able to recoup their investment and design
`costs only when they later enter licensing deals with
`large retailers, which allow designers to “offer their own
`affordable ready-to-wear lines based on those high-end
`collections. They then can lower the prices at which their
`designs are sold because they sell more of them. Just
`like other businesses—[fashion design is] dependent on
`volume. Design piracy makes it difficult for a designer to
`move from higher priced fashion to developing affordable
`renditions for a wider audience. It also makes it impossible
`to sell collections to stores when the clothes have already
`been knocked off. Licensing deals are then no longer an
`option.” Id.
`
`II. Absent Copyright Protection, Fashion Designers
`Lack an Adequate Alternative Means of Legal
`Recourse to Protect Original Designs from
`Copyists
`
`To be clear, the CFDA recognizes that most apparel is
`not and should not be protected by copyright, i.e., button-
`down collars or blazers. The limited scope of protection
`afforded fabric design and other design elements
`under copyright law, however, is of vital importance
`to the fashion industry. Indeed, scholars have noted
`that copyright protection “is currently a powerful tool
`to succeed against copiers,” as fashion designers have
`grown increasingly savvy regarding the enforcement of
`their fabric design copyrights. See Silvia Beltrametti,
`Evaluation of the Design Piracy Prohibition Act: Is
`the Cure Worse than the Disease? An Analogy with
`Counterfeiting and a Comparison with the Protection
`Available in The European Community, 8 Nw. J. Tach.
`
`
`
`13
`
`& Intell. Prop. 147, 154 (Spring 2010). Should this Court
`adopt Petitioner’s proposed separability analysis and roll
`back these long-established copyright protections, fashion
`designers would be deprived of the best means of legal
`recourse against the unauthorized use and copying of the
`artistic elements of their original designs.
`
`Fashion designers who have sought alternative
`protection for their original work through trademark
`and patent laws have had limited success. These laws
`provide inadequate protection and are furthermore, for
`the majority of independent fashion designers, unfeasible.
`Compared to the relatively straightforward process
`of copyright registration—requiring filing a short
`application and paying a nominal fee5—trademark and
`patent registration entail a lengthy and expensive process
`as well as a high bar to meet the statutory requirements.
`Even if a designer is able to register their designs with
`the United States Patent and Trademark Office, litigation
`alleging trademark or patent violations requires more
`time and resources than a small designer has to spare,
`especially given the unpredictable chances of success.6
`
`5. Filing fee for basic online copyright registration is as low
`as $35. See United States Copyright Office, Fees, http://copyright.
`gov/docs/fees.html (last visited Sept. 16, 2016).
`
`6. See Tedmond Wong, To Copy or Not to Copy, That Is the
`Question: The Game Theory Approach to Protecting Fashion
`Designs, 160 U. Pa. L. Rev. 1139, 1153 (2012) (“[T]here have been
`few notable legal victories against the duplication of the exact shape
`and appearance of fashion designs. This is most likely due to the
`lack of intellectual property protection for these elements. Fashion
`designers have used the limited forms of legal protection available
`to seek redress against copiers--through trade dress claims, for
`example--and have only achieved limited success.”)
`
`
`
`14
`
`Thus, Petitioner’s suggestion that protection for the
`design of useful articles should be “channeled” to other
`intellectual property regimes is simply unworkable. See
`Petitioner’s Br. 24-25, 30.
`
`A. Copyright Protection
`
`The constitutional purpose of copyright law is to
`promote and to protect the development of creative
`industries by ensuring that creators are the ones
`who receive the benefit of their own intellectual and
`artistic investments. Although courts have long held
`that garments, as useful articles, are not copyrightable,
`design elements that are physically or conceptually
`separable from the article’s utilitarian function may
`warrant copyright protection. See Whimsicality, Inc.
`v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989),
`citing Fashion Originators Guild v. FTC, 114 F.2d 80, 84
`(2d Cir. 1940) (L. Hand, J.), aff’d, 312 U.S. 457, 61 S. Ct.
`703, 85 L. Ed. 949 (1941); see also Mazer, 347 U.S. at 217.
`Under the doctrine of conceptual separability, courts have
`extended copyright protection to fabric designs, jewelry,
`belt buckles, lace embroidery, even the “entire exterior
`design” of a slipper in the shape of a bear’s paw.7 The Sixth
`
`7. See Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d
`Cir. 1995) (extending copyright protection to “squirrel” and “leaf”
`appliques on children’s sweaters); Folio Impressions, Inc. v. Byer
`Cal., 937 F.2d 759, 762–65 (2d Cir.1992) (protecting fabric designs as
`“writings”); Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d
`989, 993 (2d Cir. 1980) (citing a belt buckle’s “primary ornamental
`aspect” as sufficient demonstration of conceptual separability);
`Animal Fair, Inc. v. AMFESCO Indus., Inc., 620 F. Supp. 175, 187–88
`(D. Minn. 1985), aff’d sub nom. Animal Fair v. Amfesco Indus., 794
`F.2d 678 (8th Cir. 1986); Eve of Milady v. Impression Bridal, Inc.
`(“Eve of Milady I ”), 957 F.Supp. 484, 489 (S.D.N.Y.1997) (protecting
`
`
`
`15
`
`Circuit’s ruling in the instant case, extending copyright
`protection to the geometric designs on cheerleader
`uniforms, is consistent with these rulings.
`
`B. Trademark and Trade Dress Law
`
`Trademark protection under the Lanham Act provides
`the trademark holder with exclusive rights to distinguish
`the holder’s goods from the competition’s through the
`use of an identifying mark that has come to define the
`holder’s brand, e.g., logos, label names, and symbols.
`Trademark protection, however, extends only as far as
`the product’s mark. Designers, thus, have no recourse
`against a copyist who produces a duplicate design without
`the trademark.8 Not only does trademark law provide
`inadequate protection from copyists, but it also remains
`unavailable to new and emerging designers who have yet
`to establish a recognizable brand—sometimes referred to
`as a fashion designer’s DNA—and lack extensive budgets
`to develop a sufficient level of market recognition.
`
`fabric designs); Scarves by Vera, Inc. v. United Merchs. & Mfrs., 173
`F. Supp. 625, 627 (S.D.N.Y. 1959) (holding that silk-screen paintings
`applied to ladies blouses); Peter Pan Fabrics, Inc. v. Brenda Fabrics,
`Inc., 169 F. Supp. 142, 143 (S.D.N.Y. 1959) (enforcing copyright
`protection for “design printed upon dress fabric”).
`
`8. Prohibitions against counterfeiting, which involves
`the “knowing use of a spurious mark which is identical with or
`substantially indistinguishable from a registered trademark,
`in connection with the trafficking of counterfeit merchandise,”
`Trademark Counterfeiting Act of 1984, Pub. L. No. 98-473, Tit. II,
`§1502(a), 98 Stat. 2178 (1984), are strictly enforced. Counterfeiting,
`however, first requires design piracy: “before a counterfeited
`trademark is applied to a bag or piece of clothing its design must
`first be copied. A copy of a design is really a counterfeit without the
`label.” See Beltrametti, supra, at 150.
`
`
`
`16
`
`Trade dress protection, likewise, remains exclusive
`to only the most well-established brands in the fashion
`industry, which have acquired an immediately recognizable
`style and thus the requisite “secondary meaning”
`necessary to secure protection.
`
`C. Design Patents
`
`At first glance, design patents, which protect the
`“configuration or shape of an article, to the surface
`ornamentation applied to an article, or to the combination
`of configuration and surface ornamentation,” may appear
`to be a promising avenue for fashion design protection.
`In practice, however, only certain fashion designs, such
`as handbags and shoes, meet the Patent Act’s statutory
`threshold of being “novel, non-obvious and non-functional
`ornamental design for an article of manufacture.” 35
`U.S.C. §§ 171-73 (1988). Furthermore, even if a designer
`is able to meet the statutory requirements, the time and
`expense of obtaining patent protection render it grossly
`impractical. In 2015, the average time for an initial
`determination of patentability was 17.3 months, during
`which time a designer might release up to ten collections.
`See U.S. Patent & Trademark Office, Performance and
`Accountability Report Fiscal Year 2015 (2015), http://www.
`uspto.gov/sites/default/files/documents/USPTOFY15PAR.
`pdf. Even when a designer goes through the time and
`expense of obtaining a design patent, they remain
`vulnerable to copyists.9
`
`9. See Lauren Indvik, Why Patent-Holding Designs Still Get
`Knocked Off: A Case Study with Alexander Wang, Fashionista (Dec.
`18, 2013), http://fashionista.com/2013/12/why-fashion-designers-get-
`knocked-off-alexander-wang.
`
`
`
`17
`
`III. This Court Should Reject Petitioner’s Proposed
`Separability “Test”
`
`The approach to copyrightability proposed by
`Petitioner is anathema to the very idea of copyright
`protection, as expressed by this Court in Mazer v. Stein:
`
`“The economic philosophy behind the clause
`empowering Congress to grant patents and
`copyrights is the conviction that encouragement
`of individual effort by personal gain is the best
`way to advance public welfare through the
`talents of authors and inventors in ‘Science
`and useful Arts.’ Sacrificial days devoted
`to such creative activities deserve rewards
`commensurate with the services rendered.”
`
`Mazer v. Stein, 347 U.S. at 219 (1954).
`
`Petitioner admits that its approach would “undoubtedly”
`result in “a sub-optimal prophylactic rule.” See Petitioner’s
`Br. 39 (quotation marks and citation omitted). Particularly
`invidious to fashion design innovation is the presumption
`against design protection inherent in Petitioner’s proposed
`framework, which Petitioner acknowledges would create
`a limite
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