Unmasking the Copyrightability of Costumes (and Clothing)

An interesting split in the Circuits has developed over whether costumes are per se copyright ineligible. According to one line of cases, costumes are entitled to copyright protection if the design is unique. Another line of cases, however, seemingly endorsed by Second Circuit dicta, suggests that because the purpose of a costume is to allow its wearer to masquerade, the design of the costume is not conceptually separable from the clothing itself.

Applying these copyrightability concepts to clothing has perplexed several courts. While it is universally recognized that articles of clothing are useful articles, does the separability doctrine provide some protection for the design element of a particular clothing item? Though highly fact sensitive, generally the answer is “yes.” See Kieselstein-Cord v. Accessories By Pearl, Inc., 632 F.2d 989 (2d Cir. 1980); See also Poe v. Missing Persons, 745 F.2d 1238 (9th Cir. 1984); Animal Fair Inc. v. Amfesco Indus., 620 F.Supp. 175 (D.C. Minn. 1985), aff'd mem. 794 F.2d 678 (8th Cir. 1986).

On June 2, 2005, the Second Circuit Court of Appeals issued a decision that seems to eliminate any further conflict over this issue within the Second Circuit. Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d. 324 (2d Cir. 2005). Specifically, the Second Circuit rejected the concept that all costumes are merely “useful articles” not capable of being copyrighted and expressed “skepticism regarding [the] claim that Halloween costumes are, as such, copyright ineligible because they permit the wearer to masquerade.” Id. at n.3.

The History of the Separability Doctrine

The Copyright Act of 1976 excludes from protection items defined as “useful articles.” 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.” 17 U.S.C. '101. At the same time, it is well established under the doctrine of separability that certain elements of useful articles may still be copyrightable if they are not part of the functional aspect of the item. See, e.g., Mazer v. Stein, 347 U.S. 201, 218-219 (1954) (holding that the design of a carved lamp base was protected by the Copyright Act, though the lamp itself was a useful article).

The “separability” doctrine looks to whether there are particular elements of a useful article that are conceptually and/or physically separate, and, therefore, eligible for copyright. This definition, however, is not particularly precise. For instance, there is a split over whether physical and conceptual separability are separate or alternative elements. See Celebration International, Inc. v. Chosun International, Inc., 234 F. Supp. 2d 905, 913 (S.D. Ind. 2002) (collecting cases).

The crux of this issue is whether wearing a costume in order to masquerade as something else makes the costume conceptually inseparable from its functional role as an article of clothing. The leading case in favor of holding design elements of costumes eligible for copyright is National Theme Productions v. Jerry B. Beck, Inc., 696 F. Supp. 1348 (S.D. Cal. 1988). In that case, the court concluded “copyrightability ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations.” Id. at 1353 (quotation and citation omitted). Applying this test to a Rabbit in Hat costume and other highly distinctive costumes, the court held that “[t]he costumes' artistic features do not advance their utilitarian purpose as clothing,” and found the costumes to be copyrightable. Id. at 1354.

Another district court expressed the countervailing view in Whimsicality, Inc. v. Rubies Costumes Co., 721 F. Supp. 1566, 1571-73 (E.D.N.Y. 1989) (“Whimsicality I“), and concluded that the plaintiff's Halloween costumes were not copyrightable because they were useful articles:

[The costumes] are not, however, useful merely as garments, whose purpose is simply to clothe the body … Their purpose is more specialized; it is to enable the wearer to masquerade, to pretend to be a jack o'lantern or a bee or a spider. Since the purpose of the [costume] is to enable the wearer to masquerade, the artistic elements of each article are not conceptually separable from each article's utilitarian aspects.” Id. at 1574.

On appeal the Second Circuit affirmed on different grounds, but noted in dicta that “we decline to follow the National Theme decision.” 891 F.2d 452, 455 n.5 (2d Cir. 1989) (“Whimsicality II“).

The Third Circuit had occasion to touch on this same question with respect to nose masks. Masquerade Novelty, Inc. v. Unique Industries, Inc., 912 F.2d 663 (3d Cir. 1990). The defendant argued that nose masks are useful articles because they allow the human wearer to masquerade. The district court accepted this argument finding:

[w]hile there may be 'art' in the humorous configuration of the masks to resemble human shapes. The configuration is the key to their utility: the wearer does not don the product on Halloween to display art; one wears a fake animal nose to participate in the day's tradition of going about in costume. We find the animal shapes to be conceptually inseparable from the product's utilitarian purpose of creating humor. Id. at 670 (quoting lower court).

The Third Circuit reversed because it found nose masks are not useful articles. Unlike clothing they are not worn out of necessity, but solely for their appearance or artistic expression. Id. at 671. Accordingly, the particular expression for each nose mask was deemed copyrightable.

While the Third Circuit's reasoning in Unique does not extend to costumes, which, unlike nose masks, do function as clothing, the decision rejected the concept that conceptual separability could not apply if the wearer's “concept” was to masquerade.

Within the Second Circuit, however, at least one court continued to reject any copyright protection for costumes because the intent of the wearer was to masquerade. Whimsicality, Inc. v. Battat, 27 F. Supp. 2d 456, 463 (S.D.N.Y. 1998) (“Whimsicality III“). “Because the purpose of [the plaintiff's] entire line of costumes is to enable the wearer of them to masquerade, the 'artistic' elements of the costumes ' including elaborate headpieces, masks, facial details, attractive color combinations, special fabrics, and prints ' are not separable on these facts from the costumes' utilitarian aspects.” Id.

The Second Circuit Decision

It was against this background that on Oct. 3, 2002, Chosun filed suit in the U.S. District Court for the Southern District of New York against Chrisha alleging copyright infringement based on copying of its lion, orangutan, and ladybug costume designs. The trial court began the case favorably disposed to the plaintiff's claim. After viewing the products, the district court issued a temporary restraining order. However, once the defendant brought the Whimsicality cases to the court's attention, the plaintiff withdrew its request for a preliminary injunction and the TRO lapsed on its own accord. Chosun at 326.

On March 30, 2004, the district court dismissed Chosun's complaint for failure to state a claim. The court recognized that the case turned on the question of conceptual separability, which it found to be a difficult doctrine to apply:

Attempting to judge the copyrightability of the Halloween costumes reveals the incoherence of these [separability] tests. A costume's utility is in allowing the wearer to pretend to be something else ' often a caricature of something else ' and it is the artistic choices made in designing the costume that determine its saleability. It is impossible to say whether the utilitarian predominates over the artistic or vice versa. … Three courts in this District have concluded that Halloween costumes are not copyrightable [citing Whimsicality I, II, and III]. Following [these] precedents … , the Court holds that Halloween costumes may not be copyrighted.” Id. at 327.

The Second Circuit reversed. Its analysis is notable because it fails to reference its own dicta rejecting National Theme, which it now appears to have accepted. The Chosun decision emphasizes that the Second Circuit has always recognized the separability doctrine as applied to items of clothing. Id. at 328 (citing Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1985). It then relegates the “masquerade” argument to a mere footnote. Id. at 330 n.3. Finally, the Second Circuit not only expresses “skepticism” about the “masquerade” argument, but explains that this position is “at odds with the Copyright's Act's very definition of 'useful articles' … ” Id.

Notwithstanding the Second Circuit's failure to expressly reject or even acknowledge its prior dicta in Whimsicality II, we read this decision as signaling the clear intent that in the future the Second Circuit will follow the National Theme line of cases.

What Does Chosun Mean for Copyright Protection of Costumes?

While Chosun clearly opens the door for greater protection, it is important to note that the scope of this protection will still be relatively narrow. For instance, on July 7, 2005, the Fifth Circuit ruled in Galiano v. Harrah's Operating Co., 416 F.3d 411, 421-22 (5th Cir. 2005), that while a casino uniform could be protected to the extent that its design elements were separable from the clothing, the plaintiff failed to establish any separability. The lower court's unpublished decision indicates that the registered uniforms include “elaborate masquerade type costumes.” Galiano, 416 F.3d at 413. Further, the plaintiff in this case presented expert testimony concerning the design of the costumes, including the placement of the pleats, cuffs, colors, and combinations thereof. Id. 414-15.

Conclusion

Taken together, Chosun and Galiano demonstrate several key principles with respect to protecting costumes. First, it is important to remember that a clothing design, by itself, is not copyrightable. Rather, it is the design elements added to or applied to clothing that may be considered akin to a painting or soft sculpture, that are copyrightable. See Eve of Milady v. Impression, 957 F. Supp. 484 (S.D.N.Y. 1997) (copyright protection granted to selection and placement of lace on wedding dresses). See also Knitwaves Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995) (copyright protection granted to sweater designs).

Second, notwithstanding these judicial developments, it is likely to remain difficult to register costumes at the U.S. Copyright Office. The cases reflect the difficulty often encountered by those seeking to register costumes. See Whimsicality I at 1571-73; Whimsicality II at 455-56; Whimsicality III at 463. Indeed, in many instances, it appears that applicants seeking copyright registration misidentify their costumes as works of soft sculpture. See, e.g. Whimsicality II at 455-56. This has led to courts finding such copyright registrations invalid on the basis of fraud on the Copyright Office. See Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 114 (2d Cir. 2002).

Last, in evaluating conceptual separability, the Second Circuit looks to the motivation and intent of the product designers in making their creative choices. See Brandir International, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987); See also Kieselstein, 632 F.2d at 992-93. Accordingly, the more documentation that can be assembled showing that the intent of the creator for a particular costume was not functional, but rather creative, the more likely the creator is to establish a valid copyright in the non-functional design elements of the costume.

Accordingly, as a result of Chosun, costume and clothing manufacturers may now have more in their arsenal to protect themselves from infringers, and to obtain copyright registration for their works.

An interesting split in the Circuits has developed over whether costumes are per se copyright ineligible. According to one line of cases, costumes are entitled to copyright protection if the design is unique. Another line of cases, however, seemingly endorsed by Second Circuit dicta, suggests that because the purpose of a costume is to allow its wearer to masquerade, the design of the costume is not conceptually separable from the clothing itself.

Applying these copyrightability concepts to clothing has perplexed several courts. While it is universally recognized that articles of clothing are useful articles, does the separability doctrine provide some protection for the design element of a particular clothing item? Though highly fact sensitive, generally the answer is “yes.” See Kieselstein-Cord v. Accessories By Pearl, Inc ., 632 F.2d 989 (2d Cir. 1980); See also Poe v. Missing Persons , 745 F.2d 1238 (9th Cir. 1984); Animal Fair Inc. v. Amfesco Indus ., 620 F.Supp. 175 (D.C. Minn. 1985), aff'd mem . 794 F.2d 678 (8th Cir. 1986).

On June 2, 2005, the Second Circuit Court of Appeals issued a decision that seems to eliminate any further conflict over this issue within the Second Circuit. Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d. 324 (2d Cir. 2005). Specifically, the Second Circuit rejected the concept that all costumes are merely “useful articles” not capable of being copyrighted and expressed “skepticism regarding [the] claim that Halloween costumes are, as such, copyright ineligible because they permit the wearer to masquerade.” Id. at n.3.

The History of the Separability Doctrine

The Copyright Act of 1976 excludes from protection items defined as “useful articles.” 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.” 17 U.S.C. '101. At the same time, it is well established under the doctrine of separability that certain elements of useful articles may still be copyrightable if they are not part of the functional aspect of the item. See, e.g., Mazer v. Stein, 347 U.S. 201, 218-219 (1954) (holding that the design of a carved lamp base was protected by the Copyright Act, though the lamp itself was a useful article).

The “separability” doctrine looks to whether there are particular elements of a useful article that are conceptually and/or physically separate, and, therefore, eligible for copyright. This definition, however, is not particularly precise. For instance, there is a split over whether physical and conceptual separability are separate or alternative elements. See Celebration International, Inc. v. Chosun International, Inc. , 234 F. Supp. 2d 905, 913 (S.D. Ind. 2002) (collecting cases).

The crux of this issue is whether wearing a costume in order to masquerade as something else makes the costume conceptually inseparable from its functional role as an article of clothing. The leading case in favor of holding design elements of costumes eligible for copyright is National Theme Productions v. Jerry B. Beck, Inc ., 696 F. Supp. 1348 (S.D. Cal. 1988). In that case, the court concluded “copyrightability ultimately should depend on the extent to which the work reflects artistic expression uninhibited by functional considerations.” Id. at 1353 (quotation and citation omitted). Applying this test to a Rabbit in Hat costume and other highly distinctive costumes, the court held that “[t]he costumes' artistic features do not advance their utilitarian purpose as clothing,” and found the costumes to be copyrightable. Id. at 1354.

Another district court expressed the countervailing view in Whimsicality, Inc. v. Rubies Costumes Co. , 721 F. Supp. 1566, 1571-73 (E.D.N.Y. 1989) (“ Whimsicality I “), and concluded that the plaintiff's Halloween costumes were not copyrightable because they were useful articles:

[The costumes] are not, however, useful merely as garments, whose purpose is simply to clothe the body … Their purpose is more specialized; it is to enable the wearer to masquerade, to pretend to be a jack o'lantern or a bee or a spider. Since the purpose of the [costume] is to enable the wearer to masquerade, the artistic elements of each article are not conceptually separable from each article's utilitarian aspects.” Id. at 1574.

On appeal the Second Circuit affirmed on different grounds, but noted in dicta that “we decline to follow the National Theme decision.” 891 F.2d 452, 455 n.5 (2d Cir. 1989) (“Whimsicality II“).

The Third Circuit had occasion to touch on this same question with respect to nose masks. Masquerade Novelty, Inc. v. Unique Industries, Inc ., 912 F.2d 663 (3d Cir. 1990). The defendant argued that nose masks are useful articles because they allow the human wearer to masquerade. The district court accepted this argument finding:

[w]hile there may be 'art' in the humorous configuration of the masks to resemble human shapes. The configuration is the key to their utility: the wearer does not don the product on Halloween to display art; one wears a fake animal nose to participate in the day's tradition of going about in costume. We find the animal shapes to be conceptually inseparable from the product's utilitarian purpose of creating humor. Id. at 670 (quoting lower court).

The Third Circuit reversed because it found nose masks are not useful articles. Unlike clothing they are not worn out of necessity, but solely for their appearance or artistic expression. Id. at 671. Accordingly, the particular expression for each nose mask was deemed copyrightable.

While the Third Circuit's reasoning in Unique does not extend to costumes, which, unlike nose masks, do function as clothing, the decision rejected the concept that conceptual separability could not apply if the wearer's “concept” was to masquerade.

Within the Second Circuit, however, at least one court continued to reject any copyright protection for costumes because the intent of the wearer was to masquerade. Whimsicality, Inc. v. Battat , 27 F. Supp. 2d 456, 463 (S.D.N.Y. 1998) (“ Whimsicality III “). “Because the purpose of [the plaintiff's] entire line of costumes is to enable the wearer of them to masquerade, the 'artistic' elements of the costumes ' including elaborate headpieces, masks, facial details, attractive color combinations, special fabrics, and prints ' are not separable on these facts from the costumes' utilitarian aspects.” Id .

The Second Circuit Decision

It was against this background that on Oct. 3, 2002, Chosun filed suit in the U.S. District Court for the Southern District of New York against Chrisha alleging copyright infringement based on copying of its lion, orangutan, and ladybug costume designs. The trial court began the case favorably disposed to the plaintiff's claim. After viewing the products, the district court issued a temporary restraining order. However, once the defendant brought the Whimsicality cases to the court's attention, the plaintiff withdrew its request for a preliminary injunction and the TRO lapsed on its own accord. Chosun at 326.

On March 30, 2004, the district court dismissed Chosun's complaint for failure to state a claim. The court recognized that the case turned on the question of conceptual separability, which it found to be a difficult doctrine to apply:

Attempting to judge the copyrightability of the Halloween costumes reveals the incoherence of these [separability] tests. A costume's utility is in allowing the wearer to pretend to be something else ' often a caricature of something else ' and it is the artistic choices made in designing the costume that determine its saleability. It is impossible to say whether the utilitarian predominates over the artistic or vice versa. … Three courts in this District have concluded that Halloween costumes are not copyrightable [citing Whimsicality I, II, and III]. Following [these] precedents … , the Court holds that Halloween costumes may not be copyrighted.” Id. at 327.

The Second Circuit reversed. Its analysis is notable because it fails to reference its own dicta rejecting National Theme, which it now appears to have accepted. The Chosun decision emphasizes that the Second Circuit has always recognized the separability doctrine as applied to items of clothing. Id . at 328 (citing Kieselstein-Cord v. Accessories by Pearl, Inc ., 632 F.2d 989, 993 (2d Cir. 1985). It then relegates the “masquerade” argument to a mere footnote. Id. at 330 n.3. Finally, the Second Circuit not only expresses “skepticism” about the “masquerade” argument, but explains that this position is “at odds with the Copyright's Act's very definition of 'useful articles' … ” Id.

Notwithstanding the Second Circuit's failure to expressly reject or even acknowledge its prior dicta in Whimsicality II, we read this decision as signaling the clear intent that in the future the Second Circuit will follow the National Theme line of cases.

What Does Chosun Mean for Copyright Protection of Costumes?

While Chosun clearly opens the door for greater protection, it is important to note that the scope of this protection will still be relatively narrow. For instance, on July 7, 2005, the Fifth Circuit ruled in Galiano v. Harrah's Operating Co ., 416 F.3d 411, 421-22 (5th Cir. 2005), that while a casino uniform could be protected to the extent that its design elements were separable from the clothing, the plaintiff failed to establish any separability. The lower court's unpublished decision indicates that the registered uniforms include “elaborate masquerade type costumes.” Galiano, 416 F.3d at 413. Further, the plaintiff in this case presented expert testimony concerning the design of the costumes, including the placement of the pleats, cuffs, colors, and combinations thereof. Id. 414-15.

Conclusion

Taken together, Chosun and Galiano demonstrate several key principles with respect to protecting costumes. First, it is important to remember that a clothing design, by itself, is not copyrightable. Rather, it is the design elements added to or applied to clothing that may be considered akin to a painting or soft sculpture, that are copyrightable. See Eve of Milady v. Impression , 957 F. Supp. 484 (S.D.N.Y. 1997) (copyright protection granted to selection and placement of lace on wedding dresses). See also Knitwaves Inc. v. Lollytogs Ltd ., 71 F.3d 996 (2d Cir. 1995) (copyright protection granted to sweater designs).

Second, notwithstanding these judicial developments, it is likely to remain difficult to register costumes at the U.S. Copyright Office. The cases reflect the difficulty often encountered by those seeking to register costumes. See Whimsicality I at 1571-73; Whimsicality II at 455-56; Whimsicality III at 463. Indeed, in many instances, it appears that applicants seeking copyright registration misidentify their costumes as works of soft sculpture. See, e.g. Whimsicality II at 455-56. This has led to courts finding such copyright registrations invalid on the basis of fraud on the Copyright Office. See Medforms, Inc. v. Healthcare Mgmt. Solutions, Inc., 290 F.3d 98, 114 (2d Cir. 2002).

Last, in evaluating conceptual separability, the Second Circuit looks to the motivation and intent of the product designers in making their creative choices. See Brandir International, Inc. v. Cascade Pacific Lumber Co ., 834 F.2d 1142, 1145 (2d Cir. 1987); See also Kieselstein, 632 F.2d at 992-93. Accordingly, the more documentation that can be assembled showing that the intent of the creator for a particular costume was not functional, but rather creative, the more likely the creator is to establish a valid copyright in the non-functional design elements of the costume.

Accordingly, as a result of Chosun, costume and clothing manufacturers may now have more in their arsenal to protect themselves from infringers, and to obtain copyright registration for their works.