Copyright Protection for Ornamental or Fanciful Design Elements: Chosun Int’l, Inc. v. Chrisha Creations, Ltd. 

a. Test for conceptual separability and physical separability of a design element – a fact-intensive, flexible standard

     In Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d. Cir. 2005), Chosun International, Inc. (“Chosun”), a designer and manufacturer of Halloween costumes, filed suit in the Southern District of New York against Chrisha Creations, Ltd. (“Chrisha”), a competing costume manufacturer, for copyright infringement, alleging that Chrisha's costumes infringed Chosun's registered copyrights in its lion, orangutan, and ladybug costume designs.  Id. at 325-26.  The costumes in issue were described as such: “The plush sculpture attached to the hood of the costume takes the form of a head-like arrangement of small plush stuffed animal head features, which look like they might be a part of a plush stuffed toy animal. In addition, at the ends of the sleeves of the bodysuit, elements which may be seen as hands or claws are associated with a number of the costumes, being connected to the cuffs of the costume adjacent the hands and feet of a person wearing the costume.”  Id. at 325.

     The district court dismissed Chosun's complaint for failure to state a claim, concluding that, as a matter of law, Halloween costumes were not eligible for protection under the Copyright Act, 17 U.S.C. § 101.  Id. at 326.  The district court recognized that individual design elements of useful articles have some level of protection under the Copyright Act, if the design elements were physically or conceptually separable from the article itself.  Id.  However, the district court did not determine whether there were elements of Chosun's costumes that were physically or conceptually separable from their overall designs.  Id. at 327.  The court decided that the tests for physical and conceptual separability were too inconsistent, and thus, “no elements of the costumes could possibly be separated from their utilitarian function as devices with which to masquerade.”  Id.  Plaintiff Chosun appealed the decision of the district court to dismiss the case. 

     On appeal, the court decided that the district court should not have dismissed Chosun’s suit on failure to state a claim.  The court set forth a test to determine whether a design element of a useful article – such as a costume or clothing attire – may be afforded copyright protection, and held that “while ‘useful articles’, taken as a whole, are not eligible for copyright protection, the individual design elements comprising these items may, viewed separately, meet the Copyright Act's requirements.”  Id. at 328.  The court further expounded, stating that “if a useful article incorporates a design element that is physically or conceptually separable from the underlying product, the element is eligible for copyright protection.”  Id.  The court noted that in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), this court had concluded that taken as a whole, the belt was a “useful article”, however, the ornate buckle design was conceptually separable from that useful “belt” function, and thus was copyrightable.  Id.  Thus, design elements that can be “conceptualized as existing independently of their utilitarian function,” are eligible for copyright protection.  Id. at 329 (citation omitted).

     Considering the test for physical and conceptual separability, the court held that it was possible that elements of Chosun’s plush sculpted animal costumes were separable from the overall design of the costume, and thus, may have protection under the Copyright Act.  Id. at 329.  “For instance, the sculpted ‘heads’ of these designs are physically separable from the overall costume, in that they could be removed from the costume without adversely impacting the wearer's ability to cover his or her body.”  Id. at 330. Though the court had set forth this test for whether a design element may have copyright protection, the court of appeals did not determine whether elements of Chosun’s costumes did have such protection.  It merely decided whether the suit should have been dismissed for failure to state a claim upon which relief can be granted under Fed. Rule of Civ. Proc. 12(b)(6), and it vacated the district court’s decision and remanded the case.       

     Regarding copyright protection for design elements in fashion designs, the Chosun case would be useful to the extent that the design of the article of apparel or shoe is ornamental or fanciful.  A court has yet to decide what by law constitutes an ornamental or fanciful design, and the test remains fact-dependent and fact-intensive.  The Chosun case is useful in that the standard for what is copyrightable – “design elements that reflect the designer’s artistic judgment” that are “conceptually separable from utilitarian elements” – is flexible and amorphous.  Thus, fashion designers have some leeway in making a case for whether the elements of a design are independent of the utilitarian function of the apparel.  The case stands for the principle that if a design element is devoid of any utility for the overall design of the article, or if the article can function without the design element, then the design element will more likely be deemed to be ornamental or fanciful.  The design element would be physically or conceptually separable from the underlying product, and thus, copyrightable.

b. Applying the Chosun test – copyright protection limited to completely fanciful, ornamental design elements with no utilitarian function

     Applying the Chosun test, the issue is how to prove that the design element is physically or conceptually separable.  How can a case be made that the design of a ruffle on a sleeve, a strap on a sandal, or a clasp on a bag are design elements that exist independent of their utilitarian function?  The design elements of a dress, bag, or a pair of shoes are often are intertwined with the utilitarian functions of the apparel. 

     Unfortunately, we do not know how the lower court would have decided Chosun, as there is no published decision on the remanded case (it was likely settled out of court).  However, the principles that the court set forth in Chosun case is applied by the court in Eliya, Inc. v. Kohl’s Dept. Stores, 2006 WL 2645196 (S.D.N.Y. Sep 13, 2006), an unreported case decided in the District Court of Southern District of New York.  In this case, Eliya, Inc., a designer and manufacturer of shoes, brought suit against defendant Kohl's, alleging that Kohl's had copied one of Eliya's shoe designs and was selling the copied shoe at its retail stores in violation of various common law and statutory prohibitions, including copyright infringement.  Eliya alleged that its copyright in the shoe design at issue, referred to as “SHOE” in the complaint, included the “separate design elements” of two elongated stitched-patters of like size on the top front portion of the SHOE design, two elongated stitched-patterns of like size on the sides of the SHOE design, a strap with visible stitching, curved-shaped stitching on the front portion of the SHOE design, a border that wraps around and extends up the back, the sides and front of the SHOE design, a spotted design of circles all through the border and extending up the back, sides and front of the SHOE design, and a spotted design of circles all through the sole of the SHOE design; and that Kohl's copied these specific design elements when it created its own line of shoes.  Eliya, 2006 WL 2645196 at *10. 

     Citing Chosun, the court stated that Eliya was correct that “while ‘useful articles,’ taken as a whole, are not eligible for copyright protection, the individual design elements comprising these items may, viewed separately, meet the Copyright Act's requirements.”  Id. (citing Chosun, 413 F.3d at 328).  The court further acknowledged that “[s]eparability comes in two flavors - physical separability and conceptual separability,” and again referred to Chosun.  Id.  Considering Eliya’s design elements and applying the separability principle, the court concluded that the design elements in issue were neither physically nor conceptually separable from the shoe’s functionality.  Id. at *11. Though the court did not find copyright protection for the shoe’s design elements, the decision demonstrates what courts may look at in determining physical and conceptual separability of a design element.  “[T]he mere act of aesthetic decision-making does not render the result of that decision-making conceptually separable. Rather, for a design element to be conceptually separable, it must be the result of aesthetic decision-making that is independent of functional considerations.”  Id. at *12.  The design element must be an “independent artistic expression” and must be “sufficiently independent of the [article]’s functional purpose”, in order to satisfy the standard of conceptual separability.  Id. 

     Upon setting forth the standard, the court concluded that “the features reflect the designer's decisions regarding how best to implement a shoe's functional purposes – how to, in an aesthetically pleasing manner, keep the shoe attached to the wearer's feet, hold the material of the shoe together, cushion the wearer's feet, and provide traction on various surfaces…. [T]he blending of form and function in the SHOE design results in the exclusion of its design elements from copyright protection.”  Id.  The application of the Chosun test in Eliya demonstrates the limited protection that may be afforded to design elements of clothing, shoes, or other apparel. 

     I would venture that a court would require almost absolute or complete independence of the design element from any functional purpose, to find that the design element is copyrightable. If the design element has any use or utilitarian function whatsoever – a clasp on a bag, a pintucked design on a sleeve of a blouse, the strap of a shoe – a court would be hard-pressed to find conceptual or physical separability.  Notwithstanding this, an ornamental or fanciful design element would have protection.  Based on the Eliya court’s application of the Chosun holding, a court may be more likely to find conceptual and physical separability where the design element has no utilitarian function whatsoever in the overall design, such as a buckle on the front of a shoe, as with the signature buckle on Roger Vivier shoes, or a flower on the lapel of a jacket, such as the Camellia flower that signifies a Chanel design.  See images below.  If one removes the buckle or the flower, the functionality of the apparel are unaffected.  The buckle design element and the flower design element have no useful or functional purpose, thus, these design elements would likely be afforded with copyright protection.  The Vivier buckle and the Chanel Camellia likely are registered trademarks as well, thus, they would have trademark protection. 

Roger Vivier's Pilgrim buckle on its shoe design: 

Chanel's Camellia flower on a Chanel shoe design: 

Chanel's famed Camellia flower on a Chanel dress design: