Hemphill, C. Scott

Suk, Jeannie Chi Young

Harvard University - DASH 

 What "Design Copyright"?  (Article begins on next page)The Harvard community has made this article openly available.Please share how this access benefits you. Your story matters.Citation C. Scott Hemphill & Jeannie C. Suk, What "Design Copyright"?,126 Harv. L. Rev. F. 164 (2013).Published Version http://www.harvardlawreview.org/media/pdf/forvol126_hemphill&suk.pdfAccessed February 19, 2015 1:11:30 PM ESTCitable Link http://nrs.harvard.edu/urn-3:HUL.InstRepos:10907513Terms of Use This article was downloaded from Harvard University's DASHrepository, and is made available under the terms and conditionsapplicable to Open Access Policy Articles, as set forth athttp://nrs.harvard.edu/urn-3:HUL.InstRepos:dash.current.terms-of-use#OAP164 REACTION WHAT "DESIGN COPYRIGHT"? C. Scott Hemphill & Jeannie Suk  Earlier this month, in an important copyright ruling, the Supreme Court dropped a puzzling clue about copyright for designs that merits examination.  In an opinion authored by the Court’s foremost copy-right scholar, Justice Breyer, the Court posited a “design copyright” for a  “dress”  made  in  China  and  then  sold  in  the  United  States.    The statement  is  striking  because  courts  have  traditionally  denied  the copyrightability of fashion designs, including dress designs; a proposed bill to add fashion designs to copyrightable subject matter has not yet been passed by Congress.  In this Reaction, we explain the Court’s un-expected comment and why it matters. The decision, Kirtsaeng v. John Wiley & Sons, addresses the “first sale” doctrine, which permits an owner of an authorized copy to “sell or otherwise dispose of” that copy without seeking permission of the copyright  holder.    This  common-sense  limitation  on  the  copyright holder’s right to distribute his work embodies a principle of exhaus-tion, promoting the free alienability of goods and reducing transaction costs.  The question in Kirtsaeng was whether this doctrine applies not only  to  copies  made  in  the  United  States,  but  also  to  copies  made abroad  and  imported  into  the  United  States.    The  question  was  in doubt because a separate provision of the Copyright Act prohibits im-portation without permission.  An earlier case held that the first sale doctrine trumped if the work had done a “round trip” — produced in the United States, exported overseas, and then returned to the United States for resale.  Kirtsaeng accorded the same treatment to the closely related situation in which the copy was instead produced overseas and sold in the United States. The Court’s sudden fashion moment came in the course of explain-ing an undesirable consequence that would arise from a contrary re-sult: that not only importers but also subsequent transferors of the im-ported  work  would  need  the  copyright  holder’s  permission.    That would severely limit the free transfer of a variety of copyrighted goods.  The Court named as examples three apparently paradigmatic import-ed goods protected by copyright: “a video game made in Japan, a film made in Germany, or a dress (with a design copyright) made in China.” The inclusion of a dress in this list is striking.  The conventional wisdom is that the design of a dress, even if highly original, is not con-sidered copyrightable.  Indeed, an important Supreme Court antitrust case  from  1941,  Fashion  Originators’  Guild  of  America  v.  Federal Trade  Commission  (about  which  we  have  written  previously),  was    2013]  WHAT  "DESIGN  COPYRIGHT"?  165 premised on just that point.  The reason is that apparel — like shoes, furniture, and other works of practical design — is considered a “use-ful  article,”  and  hence  not  copyrightable.    The  Court’s  comment  in Kirtsaeng thus could be in some tension with the position the Court took more than seventy years ago. The most straightforward meaning of the term “design copyright” is a copyright in the overall design in the article.  That is also the way the phrase is ordinarily used by courts and commentators.  But per-haps the Court merely meant to refer to a copyrighted logo such as the Polo  pony,  or  a  copyrighted  pattern  printed  onto  fabric  such  as  the Burberry check pattern.  Such logos and prints are uncontroversially subject  to  copyright.    (Some  might  also  wonder  if  the  Court’s  most cosmopolitan and polyglot Justice had in mind the existing European design  rights  for  fashion,  but  the  context  makes  clear  that  he  must have been referring to U.S. copyright.)  The fact that Justice Breyer felt the need to add the phrase “with a design copyright” in parenthe-ses perhaps indicates his recognition that the design of a print, but not the design of the overall dress itself, is copyrightable. But if there is reason to doubt that interpretation, it would be that it is a Supreme Court opinion about copyright authored by the Court’s foremost copyright expert.  Such imprecision seems surprising at the very least. An alternative, intriguing possibility is that the Court perceives a copyright in dress designs.  And a robust one, too, on a par with films, video games, and presumably books and the full panoply of other cop-yrighted works.  On this view, the qualifying parenthetical reflects the recognition that only some dresses, not all, have sufficient originality to merit a copyright.  Such a copyright would accord with the common lay intuition that it is illegal to closely knock off an original dress de-sign.  It would be in sharp contrast, though, to the copyright lawyer’s understanding — that copyright protection is unavailable for fashion design  —  so  thoroughly  accepted  that  designers have  regularly  peti-tioned Congress to change the law to add copyright for fashion design. How could the Court hold such a view, for the sake of argument?  Such a view could be premised on an expansive understanding of the copyright  doctrine  of  “separability.”    Useful  articles  are  protectable, provided that the creative elements can be sufficiently separated from the utilitarian aspects of the article.  One source of separability is phys-ical — an applique sewn onto a sweater can be physically separated and hence is protectable.  Another source recognized by lower courts is conceptual.  What counts as “conceptual separability” is a subject of great debate.  A broad view of conceptual separability would provide protection for some designs, effectively enabling the design copyright seemingly  referred  to  by  the  Court.    And it would  echo  the  Court’s traditional sympathy, expressed in Mazer v. Stein, for the protectability of “useful works of art.”    166  HARVARD  LAW  REVIEW FORUM  [Vol. 126:164 The Supreme Court hasn’t ever addressed the questions of whether and when the creative concept of a dress design could be deemed “sep-arable” from the usefulness of the piece of apparel.  It would have the chance to do so in a litigation in which a designer whose work was copied argued that even though a dress is a “useful article,” the design is separable from its usefulness as the clothes on one’s back and there-fore copyrightable.  If that argument were to succeed and existing cop-yright law actually turned out to be able to support a “design copy-right,”  new  legislation  to  add  fashion  design  to  the  copyright  law would be unnecessary.  A test case, however, would actually be needed to vindicate this view. Our own views about such a possibility are mixed.  We would wel-come protection for fashion design, because it is fundamentally similar to other forms of creative activity.  We would be concerned, though, on two grounds.  The first concern is the breadth of protection afforded by current copyright law to copyrightable subject matter.  The copy-right  infringement  standard,  “substantial  similarity,”  runs  the  risk  of inhibiting  the  creation  of  “inspired-by’s,”  and  not  only  the  close knockoffs that most harm the market for the originals.  The benefits of leaving much material available for future innovators to use freely are well known, in fashion as in other creative activities.  The second con-cern is the long duration provided by current copyright law, either 95 years or the life of the author plus 70 years, depending on the work.  The life cycle of a fashion design is much shorter.  Such long copy-rights for fashion designs would clog up the works for additional inno-vation inspired by past designs.  (We have discussed these concerns in previous work.) The  most  recent  version  of  the  fashion  copyright  bill,  The Innovative  Design  Protection  Act,  would  add  a  fashion  design copyright  but  limit  both  the  scope  and  duration  of  the  copyright  in ways that we believe are desirable.  For example, it would narrow the infringement  standard  to  “substantially  identical”  rather  than “substantially similar,” and it would reduce the copyright term to three years.  The most intriguing aspect of the debate over fashion copyright is the occasion it presents for rethinking the expansive copyright law we currently have.  Those who believe we would be better off with a less  expansive  copyright  system  might  welcome  the  imagining  of  a narrower copyright scope and shorter duration that the debates about new design protection for fashion have engendered.  Though perhaps Justice  Breyer  did  not  intend  to  posit  a  copyright  for  overall  dress design, this thought experiment occasioned by the Court’s nonstandard use of the term “design copyright” with respect to a dress at the very least  opens  an  invitation  to  imagine  how  a  dress  design  could  be copyrightable  within  existing  doctrinal  frameworks  even  absent  new legislation. 

What "Design Copyright"?

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What "Design Copyright"?

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