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Kieselstein-Cord and Conceptual Separability

Page history last edited by Paul Riley 13 years, 9 months ago



Nearly 30 years ago in Kieselstein-Cord v. Accessories By Pearl, Inc.,[1] the United States Court of Appeals for the Second Circuit decided a case that it declared to be "on the razor's edge of copyright law."[2]  The issue before the court was whether two ornate belt buckles designed, manufactured, and sold by Barry Kieselstein-Cord ("Kieselstein-Cord") were merely utilitarian objects and thus not subject to copyright protection, or whether they possessed "pictorial, graphic, or sculptural features that can be identified separately from, and [are] capable of existing independently of, the utilitarian aspects of the [buckles]."[3]  If the buckles possessed these "conceptually separable" features, they could indeed be subject to copyright protection.  

As one might be able to tell from the court's initial characterization of the buckles as "sculptured designs cast in precious metals-decorative in nature and used as jewelry is, principally for ornamentation,"[4] the court ultimately concluded that the "primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function"[5] and that the "buckles rise to the level of creative art."[6]  In short, the buckles were copyrightable, and the court gave Kieselstein-Cord the go-ahead to pursue a copyright infringement action against Accessories by Pearl, Inc. ("Pearl").

I. Factual Background

            In 1978, Kieselstein-Cord, an award-winning designer,[7] manufacturer, and seller of fashionable jewelry, filed suit in the Southern District of New York alleging copyright infringement of two of his belt buckles, the “Vaquero” and the “Winchester,” by Pearl, which had allegedly copied the buckles and sold its versions of them for prices significantly lower than that of the originals.[8]  Although the district court found that Pearl's buckles “appear to be line-for-line copies” of Kieselstein-Cord's buckles and that some of Pearl's customers referred to Pearl's buckles on order forms as “‘Barry K Copy,’ ‘BK Copy’ and even ‘Barry Kieselstein Knock-Off,’”[9] the district court granted Pearl's motion to dismiss the case because “[the buckles] fail to satisfy the test of separability and independent existence of the artistic features, which is required under [both the 1909 and 1976 Copyright Acts].”[10]  Consequently, Kieselstein-Cord appealed the case to the Second Circuit.            

            Kieselstein-Cord produced the buckles by sculpting, after carefully planning their designs with sketches, a prototype of each.  He then used the prototypes used to create molds to cast the buckles in gold or silver.  "The Vaquero gives the appearance of two curved grooves running across one corner of a modified rectangle and a third groove running across the opposite corner.  On the Winchester buckle two parallel grooves cut horizontally across the center of a more tapered form, making a curving ridge which is completed by the tongue of the buckle.”[11]  

            High fashion retailers and jewelry stores sold the buckles, which ranged in prices from $147.50 to $6,000.  Moreover, the Metropolitan Museum of Art accepted both the Winchester and the Vaquero buckles as additions to its permanent collection.[12]  Most important to the court's analysis, however, the buckles were sometimes worn around the neck or parts of the body other than the waist.[13] 

II. Discussion

A. Legal Standard      

The 1976 Copyright statue does not provide for copyright of useful articles unless the articles' designs include “pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the 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.”[14]  17 U.S.C. § 102 provides for the protection of "pictorial graphic, and sculptural works.”   Further, as the Kieselstein court emphasized, the legislative history of section 101 provides that the separability of the artistic features can occur either “physically or conceptually.”[15]

B. Issue

The question presented on appeal, of course, was whether the buckles possessed any conceptually separable elements.

C. Ruling

            As it did in district court, Pearl argued that the buckles were merely useful articles that included decorative features that serve both aesthetic and utilitarian purposes.[16]  Further, Pearl contended more generally that conceptual separability alone was insufficient to accord copyright to an artistic element.[17]  Pearl relied on Esquire v. Ringer,[18] then the leading case on separability, in support of both of these propositions. 

There, the D.C. Circuit concluded that the modernistic form of outdoor lighting fixtures was not eligible for copyright protection as works of art because “the overall design or configuration of the utilitarian object, even if it is determined by aesthetic as well as functional considerations, is not eligible for copyright.”[19]  Moreover, the D.C. Circuit denied that conceptual separability alone is sufficient to accord an artistic element copyright protection.[20]

            The court flatly rejected Pearl's latter argument and the D.C. Circuit's reasoning[21] and, regarding the first argument, stated that it saw “in [Kieselstein-Cord's] belt buckles separable sculptural elements, as apparently have the buckles' wearers who have used them as ornamentation for parts of the body other than the waist.”[22]  Thus, the court concluded that the “primary ornamental” aspect of the buckles was conceptually separable from the buckles’ “subsidiary utilitarian function” and stated that the buckles could be considered jewelry.[23]

           David Nimmer, a prominent commentator on copyright law, maitains that the conceptual separability ruling made by the Second Circuit in Kieselstein was actually a likelihood of marketability test:  “it may be concluded that conceptual separability exists where there is any substantial likelihood that even if the article had no utilitarian use it would still be marketable to some significant segment of the community simply because of its aesthetic qualities.”[24]  Here, because people wore the belts on parts of their bodies other than their waists, Nimmer contends, the test was satisfied.

D. Dissent

            Judge Weinstein dissented from the majority opinion of Judge Oakes and Judge Graafeiland and would have found that buckles were useful articles with no conceptually separable features.[25]  First, Weinstein argued that the court's result marked a distinct shift from prior developments in the law.  He wrote: 

[C]ourts . . . have tried to follow the principle of the copyright act permitting copyright to extend only to ornamental or superfluous designs contained within useful objects while denying it to artistically designed functional components of useful objects.  Generally they have favored representational art as opposed to non-representational artistic forms which are embodied in, and part of, the structure of a useful article.[26]  

Second, Weinstein contended that Congress considered and declined to enact legislation that would have extended copyright protection to “[t]he ‘design of a useful article’ including its two-dimensional or three-dimensional features of shape and surface, which make up the appearance of the article,”[27] a category in which Weinstein believed the buckles fell. 

Finally, Weinstein, advocating judicial restraint, argued that the type of policy determinations at stake in the case are best decided by Congress.[28]   Moreover, he also echoed one of the key issues in the current debate regarding the legal protection of fashion design. 

Should we encourage the artist and increase the compensation to the creative?  Or should we allow cheap reproductions which will permit our less affluent to afford beautiful artifacts?  Appellant sold the original for $600.00 and up.  Defendant's version went for one-fiftieth of that sum. 

Thus far Congress and the Supreme Court have answered in favor of commerce and the masses rather than the well-to-do.  Any change must            be left to those higher authorities.  The choices are legislative not judicial.[29]     

III. Does Kieselstein Survive? 

Kieselstein marked the beginning of a period of confusing and arguably inconsistent Second Circuit[30] and nationwide[31] rulings regarding conceptual separability that continues today.  It appears, however, that Kieselstein is still good law.

In Chosun,[32] a 2005 case, the Second Circuit attempted to harmonize its prior rulings regarding conceptual separability.  The court reversed the district court's dismissal of Chosun’s complaint alleging copyright infringement of a plush animal costume that consisted of a bodysuit and a plush sculpted hood and hands; the court concluded that it was at least possible that the sculpted plush heads and hands of the costumes were conceptually separable.[33]  In other words, the Second Circuit found that “Chosun may be able to show that [the heads and hands] invoke in the viewer a concept separate from that of the costume’s “clothing” function, and that their addition to the costume was not motivated by a desire to enhance the costume's functionality qua clothing."[34]   

In so ruling, the Second Circuit said of Kieselstein and its belt buckles, “[t]he design--which did not enhance the ability to hold up one's trousers--could properly be viewed as a sculptural work with independent aesthetic value, and not as an integral element of the belt's functionality. . . .  It was, therefore, copyrightable.”[35]

IV. Kieselstein's Importance to Fashion

Kieselstein is one of the only times that a court has recognized that fashion is art and protected it that way.  Indeed, throughout its opinion, the court compared the buckles to art as cutting-edge and conceptual as Christo's “Running Fence”[36] and as traditional as that in a Tutankhamen or Scythian gold exhibit.[37]  While the “fashion is art” proposition is an a priori truth to many designers who considers themselves artists and to art museums like the Metropolitan Museum of Art that house fashion as part of their permanent collections,[38] the same cannot be said for Congress and many judges.  Perhaps part of the problem with this proposition is that the words “fashion” and “art” mean different things to different people.[39]  

Next, as I mentioned above, the case and particularly its dissent nicely foreshadow elements of the current debate between those who seek to protect fashion design and innovation through legislation such as the Design Piracy Prohibition Act and those who argue that such legislation will not only stifle innovation, but also that it will only benefit already prosperous designers and their affluent customers.  This seems to be the point that Judge Weinstein is making when he writes that “Congress and the Supreme Court have answered in favor of commerce and the masses rather than the artists, designers and the well-to-do.”[40]  

Finally, Kieselstein is important to fashion because the doctrine of conceptual separability that it established and that other cases have built upon leaves open the possibility that a court could find that the artistic elements of a design meet the separability test.  For example, a court could find that the design of one of Hussein Chalayan's light-emitting diode dresses[41] could be conceived of as a sculptural work with independent aesthetic value (perhaps like a sculpture of Dan Flavin)[42] and that the design was not an important part of the dress’s utilitarian function of merely covering a human body.  Only time will tell whether an adventurous court will take this path.           

[1] 632 F.2d 989 (2d Cir. 1980).

[2] Id.

[3] 17 U.S.C. § 101.

[4] Kieselstein-Cord, 632 F.2d at 990.

[5] Id. at 994.

[6] Id. at 989.

[7] Id. (stating that, in 1979, Kieselstein-Cord received a Coty American Fashion Critics' Award for his work in jewelry design).   

[8] Id. at 991.

[9] Id.

[10] Kieselstein-Cord v. Accessories By Pearl, Inc., 489 F. Supp. 732, 736 (S.D.N.Y. 1980).  The district court, unlike the Second Circuit, did not seem to appreciate the buckles as art objects.  See id. at 737 (“The belt buckles in this case seem to belong more to the world of fashion design than to the world of literature and art, which is the traditional domain of copyright law.”).

[11] Kieselstein-Cord, 632 F.2d at 990.

[12] E.g., id. at 991.  

[13] See id; id. at 993 ("We see in appellant's belt buckles conceptually separable elements sculptural elements, as apparently have the buckles' wearers who have used them for ornamentation on parts of the body other than the waist.").

[14] 17 U.S.C. § 101. 

[15] Kieselstein-Cord, 632 F.2d at 993.

[16] Id.

[17] Id.

[18] 591 F.2d 796 (D.C. Cir. 1978).

[19] Id. at 804 (quoting H.R. Rep. No. 94-1476, 94th Cong. at  55 (1976)).    

[20] Id. (stating that the “isolated reference” to conceptual separability in the House Report is countered by the House statement when read '”in its entirety”); see also Nimmer on Copyright § 2.08 (2000) (discussing Esquire and Kieselstein).

[21] Kieselstein-Cord, 632 F.2d at 993 (“[Pearl] goes too far by . . . arguing that copyrightability cannot adhere in the ‘conceptual’ separation of an artistic element. . . . This assertion flies in the face of the legislative intent . . . .”).

[22] Id.

[23] Id.

[24] Nimmer, supra note 20, at § 2.08. 

[25] Kieselstein-Cord, 632 F.2d at 994.

[26] Id.at 996.

[27] Id. at 997. 

[28] Id. at 994 ("All of us are offended by the flagrant copying of another's work.  This is regrettable, but it is not for this court to achieve a result Congress has denied.").

[29] Id. at 999. 

[30] Compare Kieselstein-Cord, 632 F.2d at 989 (endorsing a primary/subsidiary test for conceptual separability) with Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d 411, 419 (2d Cir. 1985) (concluding that when the artistic features of an object are “inextricably intertwined” with its utilitarian features, the features are not copyrightable) and Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (stating that “where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists”) and Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 327 (2d Cir. 2005) (overruling the district court which found that the circuit’s tests for conceptual separabilty were too inconsistent to provide meaningful guidance and applying the tests of Kieselstein-Cord, Carol Barnhart, and Brandir).

[31] See, e.g., Galiano v. Harrah's Operating Co., 416 F.3d 411, 417 (5th Cir. 2005) (“There are at least six distinct variations of that test, and courts ‘have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article's utilitarian function.’” (quoting Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 670 (3d Cir. 1990))).

[32] Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 327 (2d Cir. 2005).

[33] Id.

[34] Id.

[35] Id.

[36] See Christo and Jeanne Claude, http://www.christojeanneclaude.net/rf.shtml (last visited Jan. 31 2009).

[37] Kieselstein-Cord, 632 F.2d at 994.

[38] See, e.g., The Metropolitan Museum of Art:  The Costume Institute, http://www.metmuseum.org/Works_of_Art/department.asp?dep=8 (housing a collection of more than 30,000 costumes and accessories) (last visited Jan. 25, 2009).

[39] Professor Amy Adler has explored this issue with art in the context of obscenity law.  See Amy M. Adler, Note, Post-Modern Art and the Death of Obscenity Law, 99 Yale L.J. 1359, 1359 (1990).  Adler argues that post-modern art is defined by its transgressive and subversive quality and thus that it has “rendered standards such as [Miller v. California’s] ‘serious artistic value’ obsolete.”  Id.    

[40] Kieselstein-Cord, 632 F.2d at 999.

[41] See The Independent, Hussein Chalayan's Fashion Fantasies, http://www.independent.co.uk/life-style/fashion/features/hussein-chalayans-fashion-fantasies-1452107.html?action=Popup (last visited Jan. 29, 2009).

[42] See BBC News, In Pictures:  Dan Flavin Retrospective, http://news.bbc.co.uk/2/shared/spl/hi/picture_gallery/06/entertainment_dan_flavin_retrospective/html/1.stm (last visited Jan. 30, 2009).

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