Galiano v. Harrah's Operating Co.

United States Court of Appeals
Fifth Circuit
F I L E D
REVISED JULY 8, 2005
July 7, 2005
In the
Charles R. Fulbruge III
United States Court of Appeals Clerk

for the Fifth Circuit
_______________

m 04-30521
m 04-30806
_______________

JANE GALIANO AND GIANNA, INC.,

Plaintiffs-Appellants,

VERSUS

HARRAH’S OPERATING COMPANY, INC.; HARRAH’S ENTERTAINMENT, INC.,

Defendants-Appellees.

_________________________

Appeals from the United States District Court
for the Eastern District of Louisiana
m 2:00-CV-71-E
______________________________

Before DAVIS, SMITH, and DEMOSS, fringement claim and denied Gianna’s motion
Circuit Judges. for summary judgment on Harrah’s’ fraud on
the Copyright Office counterclaim. After the
JERRY E. SMITH, Circuit Judge: court issued its judgment, in a separate motion
Harrah’s requested, and the district court
Gianna, Inc. (“Gianna”), sued Harrah’s En- granted, attorney’s fees. Gianna timely
tertainment, Inc. (“Harrah’s”), for copyright appealed (1) the summary judgment against its
infringement. The district court granted Har- copyright infringement claim; (2) the denial of
rah’s’ motion for summary judgment on the in- its summary judgment motion involving Har-
rah’s fraud on the Copyright Office counter- ing to settle all disputes in May 1996.1 Har-
claim; and (3) the award to Harrah’s of attor- rah’s continued to order Gianna-designed cos-
ney’s fees. We have consolidated all issues for tumes from its suppliers.
appellate argument. We affirm the summary
judgment in favor of Harrah’s on the In October 1999 Gianna sought and re-
infringement claim, dismiss the appeal regard- ceived copyright protection for a collection of
ing the denial of summary judgment to Gianna sketches entitled “Uniform and Costume Col-
on the counterclaim, and vacate and remand lection submitted to Harrah’s Operating Com-
the order awarding attorney’s fees. pany, Inc.”2 The certificate identified the col-
lection as “Artwork for Wearing Apparel” and
I. classified the work as “2-dimensional art-
Jane Galiano is the founder and owner of work.” Galiano is identified as the author of
Gianna, Inc., which designs clothing and coun- the copyrighted work. The collection includes
sels various industries regarding their pro- more than fifty colored and numbered illustra-
fessional attire. In August 1995, Gianna and tions, including sketches of uniform style
Harrah’s entered into an agreement (the shirts, blouses, vests, jackets, pants, shorts, en-
“Design Consulting Agreement”) pursuant to sembles, elaborate masquerade-type costumes,
which Gianna was to design uniforms for em- and unique head gear and a dozen pages of
ployees of various Harrah’s casinos. Subse- silkscreen artwork.3
quent exchanges between the parties resulted
in the creation of several proposed sketches.
1
According to the district court’s opinion, the
Because Gianna did not have the capacity settlement agreement set a lump sum payment and
to produce patterns of the sketch designs or confirmed a scheme of royalties to be paid to Gian-
make the finished uniforms, it entered into a na in the event that Harrah’s used certain specified
manufacturing agreement (the “Uniform Man- Gianna designs.
ufacturing Agreement”) with Uniform Ideas, 2
Inc., one of Harrah’s’ suppliers. That agree- Certificate of Registration No. 456-437.
ment stated that Uniform Ideas, Inc., would 3
The extent of Gianna’s copyrighted collection
manufacture uniforms for Gianna during the is not completely clear from the appellate record.
period from September 1, 1995, to August 31, The Gianna Collection appears to include the
1996. Gianna also contacted All-Bilt Uniform following:
Fashion (“All-Bilt”), another Harrah’s sup-
plier, about manufacturing some of the uni- Uniform Jackets: semi-fitted look, princess
form designs. Gianna and All-Bilt did not sign lines in front and back, star buttons
a contract, but All-Bilt produced some proto-
types of Gianna-designed uniforms and Uniform Shirts: asymmetric closures,
submitted them for Harrah’s’ approval. piped mandarin collar with center front
notch, embroidered cuff logo, star buttons,
The design agreement between Gianna and and coin design
Harrah’s expired according to its terms on De-
Chef Uniform: distinctive bib front, man-
cember 1, 1995. The parties entered into ne-
darin collar with center front notch, cuff
gotiations to extend the contract, but failed to logo and trim, and striped pants.
do so and entered into an agreement purport- (continued...)

2
 Three months after obtaining the copyright II.
protection, Gianna (with Galiano individually To prove copyright infringement, a plaintiff
as co-plaintiff) sued in federal district court al- must show ownership of a valid copyright and
leging that Harrah’s had breached the May actionable copying. See Positive Black Talk,
1996 settlement agreement 4 and committed Inc. v. Cash Money Records, Inc., 394 F.3d
copyright infringement by continuing to use 357, 367 (5th Cir. 2004). Accordingly, the
and order Gianna-designed uniforms. Harrah’s district court first determined the extent of Gi-
counterclaimed for fraud and misuse of the anna’s copyright in her “registered” works.
Copyright Office, asserting that Gianna had Because copyright law does not allow one to
failed to disclose that the allegedly copyrighted copyright “clothing designs” in which the ar-
work was not original and that it intended to tistic and utilitarian qualities are indivisible, the
cover items that are not properly court reasoned, Gianna’s copyright could not
copyrightable. extend to the designs for the wearing apparel
depicted in the illustrations referenced in her
Certificate of Copyright. The court therefore
found that Gianna’s copyright is valid only to
3
(...continued) the extent that it protects the two-dimensional
artwork, i.e., the illustrations and silkscreens
Chef Hats: uniquely shaped like vegetables that comprise the collection. We elaborate on
this first holding somewhat extensively here.
Uniform Shirt: short sleeves, piped man-
darin collar with center front notch, jac- The district court relied on much of the ma-
quard fabric trim on a concealed button or terial we examine in part II.C.2.b, infra, in
snap placket, with additional jacquard fab- holding that Gianna’s copyright did not extend
ric stripes down either side, piped cuff to the uniform designs. The court explained
trim, inverted center back pleat with star that copyright protection would be available
at the top only for a design’s artistic expression and not
for the design of the clothing itself. Because
Tuxedo Jackets: distinctive shawl collar
the court could not equate the design of the
styling with a deep V neckline
uniforms’ buttons, pleats, and collars—though
Uniform Vests: female has princess lines admittedly very creative—to an artistic draw-
with unique buckle closure, deep V neck- ing on a shirt or a fabric design, it concluded
line and a semi-fitted look; male vest also that the design’s artistic and utilitarian ele-
has deep V neckline and two buckle ac- ments were conceptually indivisible and there-
cents on one side of the front fore not copyrightable subject matter.

Uniform Shirt: color-blocked mandarin Gianna also relies heavily on the deposition
collar and concentric flanges on front ac- and report of Bonnie Belleau, Ph.D.,5 who
centing the princess lines, front and sleeves
color-blocked
4 5
On April 10, 2002, the district court granted Belleau is Professor of Apparel Design and
Harrah’s’ motion for partial summary judgment Production, LSU School of Human Ecology. It ap-
dismissing the breach of contract claim. A panel of pears that the primary purpose of her report is to
this court affirmed the dismissal on May 14, 2003. (continued...)

3
opined that the Gianna uniform designs are The district court noted that Belleau set out
highly artistic and that the utilitarian and aes- in some detail the artistic features of the uni-
thetic elements are easily separable. Belleau forms, but the court found that these features
testified that the Gianna uniforms have a “cos- were nothing more than “useful design features
tume look” as distinguished from a “functional of wearing apparel.” Because none of these
uniform appearance” and therefore should design features has intrinsic value as a work of
qualify for copyright protection as artistic art that can exist independently of the uniform
costumes.6 Gianna argues that Belleau’s wearing apparel, the district court concluded,
report and testimony demonstrate that these they do not qualify for copyright protection.
designs are not intended merely to enhance the
garment’s functionality, but to render the de- Next, the court analyzed whether Harrah’s
sign a creative asset.7 committed “actionable copying” of Gianna’s
collection, in light of the previously deter-
5
mined scope of copyright. The court differen-
(...continued) tiated between “direct infringement” and “con-
show that the designs manufactured by All-Bilt for
tributory or vicarious infringement,” which are
Harrah’s after the relationship with Gianna ended
separate and distinct causes of action.
are “substantially similar” to the designs from the
Gianna collection.
In her original and amended complaints,
6
In her report, Belleau discusses the artistic Gianna alleged that Harrah’s “reproduced the
qualities of the uniforms such as the copyrighted work in copies” and “prepared de-
rivative works based on the copyrighted works
logo cuff, a piped mandarin collar with a notch throughout its gambling empire.”8 Therefore,
at center front, the inverted center back pleat the court concluded, Gianna based its claim on
with a star at the top, jacquard fabric trim on a a theory of direct infringement. In its opposi-
concealed button or snap placket, jacquard fab- tion to summary judgment, however, Gianna
ric stripes down either side, piped cuff trim, alleged that Harrah’s would be liable for con-
princess lines in front and back, star buttons, a tributory infringement even if there was insuf-
flange at the shoulder, concentric flanges on the
ficient evidence of direct infringement. The
jacket front, asymmetric closures, button
designs, bib front, placement of buckle clos-
ures, color blocking, and combinations of fab-
7
rics, style lines, trim, and silhouette. (...continued)
leau, “are very distinctive and unique and go be-
She concludes that “[t]he unique design features yond the basic functional requirements of a button,
are artistic characteristics that are not critical to the and, as such were copyrighted.”
functional aspects of the garments, therefore the
8
collection qualifies for copyright.” We do not extensively address the derivative
works argument in this opinion. Although we de-
7
For example, Gianna notes that its design of cline to do so because the argument is under-the-
the “jacquard fabric stripes down either side” look orized, we also note that to find infringement based
like suspenders, but are not; this demonstrates that on a derivative works right (the artwork itself is
the designer’s intent to create an asset that was protected) would be to usurp a fairly developed
primarily artistic. Gianna also offers the uniform (albeit hotly contested) applied-art jurisprudence
jacket’s “star buttons,” which, according to Bel- that takes the difference between the drawings and
(continued...) the objects depicted in them into full consideration.

4
court considered this additional allegation to Act,10 however, it is entitled to copyright
constitute Gianna’s pleading a new cause of protection only to the extent that its artwork
action, which the court refused to allow Gian- or creative design is separable from the
na to do after four years of litigation in this utilitarian aspects of the work.
case. Denying Gianna leave to amend her
complaint to add allegations of contributory or The applicable statute provides the follow-
vicarious infringement, the court dismissed the ing:
infringement claim, holding that Gianna failed
to show a material fact issue existed as to Copyright protection subsists in original
whether Harrah’s committed “direct actionable works of authorship fixed in any tangible
copying” of the Gianna collection that was medium of expression, now known or later
entitled to copyright protection. developed, from which they can be per-
ceived, reproduced, or otherwise communi-
We conclude that Gianna did not own a cated, either directly or with the aid of a
valid copyright in the clothing designs. As a machine or device. Works of authorship
result of this disposition, we do not reach include pictorial, graphic, and sculptural
(1) whether Gianna’s claim sounded in direct works . . . .
or contributory infringement or (2) whether
Gianna could prevail under either theory. 17 U.S.C. § 102(a). The statute then defines
what a PGS work is:
A.
We have appellate jurisdiction of the district Such works shall include works of artistic
court’s final order under 28 U.S.C. § 1291.9 craftsmanship insofar as their form but not
We review a summary judgment de novo, in their mechanical or utilitarian aspects are
accordance with the Federal Rule of Civil concerned; the design of a useful article, as
Procedure 56 analysis that guides the district defined in this section, shall be considered
court. See Ford Motor Co. v. Tex. Dep't of a [PGS] work only if, and only to the ex-
Transp., 264 F.3d 493, 498 (5th Cir. 2001). tent that, such design incorporates [PGS]
features that can be identified separately
B. from, and are capable of existing independ-
This case involves the copyrightability of ently of, the utilitarian aspects of the article.
“pictorial, graphic, and sculptural works”
(“PGS” works). These articles may be two- or
three-dimensional and include works such as 10
A “useful article” is defined in 17 U.S.C.
maps, fine or graphic art, diagrams, models, § 101 as “an article having an intrinsic utilitarian
and technical drawings. 17 U.S.C. § 101. If function that is not merely to portray the appear-
an item qualifies as a “useful article” under the ance of the article or to convey information.” The
1976 amended version of the Copyright Act
changed the former language of “sole intrinsic util-
itarian function” in the 1909 Act to the current
9
Title 28 U.S.C. § 1388(a) conferred original wording of “an intrinsic utilitarian function.” 1 M.
jurisdiction on the district court. Gianna satisfied NIMMER AND D. NIMMER, NIMMER ON COPY-
the jurisdictional requirement of 17 U.S.C. § 411 RIGHT § 2.08[B][3], at 2-93-95 (2005); see also
by filing a certificate of registration with the United Kieselstein-Cord v. Accessories by Pearl, Inc.,
States Copyright Office. 632 F.2d 989, 993 (2d Cir. 1980).

5
17 U.S.C. § 101. § 101’s separateness requirements implement
what is called the “conceptual separability
C. test.”12 There are at least six distinct vari-
The test for whether Gianna can copyright ations of that test,13 and courts “have twisted
the designs proceeds in two steps. First, we
must determine whether the asset for which
the creator seeks copyright protection is a 11
(...continued)
“useful” article. If it is not, there is no PGS NO. 1476, 94th Cong., 2d Sess. 105 (1976)
bar to copyright protection. If it is, the panel (hereinafter “House Report”).
must determine whether the “design incorpor-
12
ates [PGS] features that can be identified sep- See Pivot Point, 372 F.3d at 923 n.8; Su-
arately from, and are capable of existing inde- perior Form Builders, Inc. v. Dan Chase Taxider-
pendently of, the utilitarian aspects of the ar- my Supply Co., 74 F.3d 488, 494 (4th Cir. 1996)
ticle.” Id. Answering the first question is (asking whether functional aspects of animal man-
nequins are “conceptually separable from the
easy; answering the second is not.
works’ sculptural features”); Brandier Int’l, Inc. v.
Cascade Pac. Lumber Co., 834 F.2d 1142, 1144
1. (2d Cir. 1987) (stating that “‘[c]onceptual
There is little doubt that clothing possesses separability is thus alive and well”); Carol Barn-
utilitarian and aesthetic value. “It is common hart Inc. v. Econ. Cover Corp., 773 F.2d 411, 418
ground . . . among the courts that have exam- (2d Cir. 1985) (judging copyrightability of man-
ined this issue [that the 1976 Copyright Act’s nequin torsos based on whether “forms possess
PGS provisions were] intended to distinguish aesthetic or artistic features that are physically or
creative works that enjoy protection from the conceptually separable from the forms’ use as
elements of industrial design that do not.” See utilitarian objects to display the clothes”); Norris
Pivot Point Int’l, Inc. v. Charlene Prods., Inc., Indus., Inc. v. Int’l Tel. & Tel. Corp., 696 F.2d
372 F.3d 913, 920-21 (7th Cir. 2004) (en 918, 923 (11th Cir. 1983) (“Both case law and
banc). The hard questions involve the meth- legislative history indicate that separability en-
odology for severing creative elements from compasses works of art that are either physically
severable from the utilitarian article or conceptu-
industrial design features.
ally severable [sic].”); Kieselstein-Cord, 632 F.2d
at 993 (applying conceptual severability test).
2.
Although the statutory language ostensibly 13
See Kieselstein-Cord, 632 F.2d at 993 (ex-
requires that two conditions be satisfied, the amining whether artistic features are “primary” and
consensus among courts and academics is that, utilitarian features are “subsidiary”); Carol
because the statutory language was essentially Barnhart, 773 F.2d at 422 (Newman, J., dissent-
lifted from a case predating the legislation,11 ing) (examining whether the article “stimulate[s] in
the mind of the beholder a concept that is separate
from the concept evoked by its utilitarian func-
11
The current copyright laws expressly imple- tion”); Brandir Int’l, Inc. v. Cascade Pac. Lumber
ment the holding in Mazer v. Stein, 347 U.S. 201 Co., 834 F.2d at 1142, 1143 (adopting a position
(1954). In Mazer, the Court upheld the a copyright espoused by Professor Robert Denicola, whether
in a statue used as a lamp base. The House Report the artistic design was animated by functional
accompanying the 1976 Act refers to “the rule of considerations); 1 NIMMER ON COPYRIGHT §
Mazer, as affirmed by the bill.” See H.R. REP. 2.08[B][3], at 2-101 (2004) (stating the test as
(continued...) (continued...)

6
themselves into knots trying to create a test to “conceptualized as existing independently
effectively ascertain whether the artistic as- of their utilitarian function.” This in-
pects of a useful article can be identified sep- dependence is necessarily informed by
arately from and exist independently of the ar- “whether the design elements can be identi-
ticle’s utilitarian function.” Masquerade Nov- fied as reflecting the designers artistic judg-
elty, Inc. v. Unique Indus., Inc., 912 F.2d 663, ment exercised independently of functional
670 (3d Cir. 1990). influence.” If the elements do reflect the
independent, artistic judgment of the de-
Pivot Point is a sprawling, comprehensive signer, conceptual separability exists. Con-
exegesis of conceptual separability jurispru- versely, when the design of a useful article
dence. See Pivot Point, 372 F.3d at 920-32. is “as much the result of utilitarian
Although it is not binding on this court, Pivot pressures as aesthetic choices,” the useful
Point represents, by orders of magnitude, the and aesthetic elements are not conceptually
most thorough and persuasive analysis of this separable.
question in any circuit.
Id. at 931 (citations omitted). In other words,
That survey revealed several things. First, where artistic discretion dominates practical
it concluded that “the circuits that have ad- necessity as the driving force behind design
dressed [this question] have recognized that choices, a useful article may nonetheless quali-
the wording of the statute does not supply cat- fy for protection as a PGS work. Third, Pivot
egorical direction, but rather requires the Point strongly suggests that the contested fea-
Copyright Office and the courts ‘to continue tures may be considered in the aggregate. See
their efforts to distinguish applied art and in- id. at 925 (quoting Carol Barnhart, 773 F.2d
dustrial design.’” Id. at 921 (internal citations at 418).14
omitted). Second, and more importantly, it re-
framed the conceptual separability test: Acknowledging the comprehensiveness of
that opinion, however, is not tantamount to
Conceptual separability exists, therefore, applying it here. We do not reject the Pivot
when the artistic aspects of an article can be Point test in this circuit, but we decline to ap-
ply it to the instant facts for several reasons.

13
(...continued) a.
whether the useful article “would still be market- First, the degree of influence Pivot Point
able to some significant segment of the community will ultimately exert is manifestly uncertain.
simply because of its aesthetic qualities.”); 1 PAUL Courts considering PGS issues post-Pivot
GOLDSTEIN, COPYRIGHT § 2.5.3, at 2:67 (1996) Point seem either to be adopting the test in
(asking whether the artistic features “can stand
alone as a work of art traditionally conceived, and
14
. . . the useful article in which it is embodied would See Stanislawski v. Jordan, 337 F. Supp. 2d
be equally useful without it,”); 1 WILLIAM F. 1103, 1113 (E.D. Wis. 2004), discussed infra
PATRY, COPYRIGHT LAW & PRACTICE 285 (1994) (“[W]hen looking at the Stanislawski’s frames, the
(suggesting that separability may actually be a arrangement of common elements may be an orig-
frivolous requirement and that courts may be better inal and protectable artistic element even if the re-
served by relying on an alternate, two-step spective elements are themselves common and un-
inquiry). protectable.”) (internal citations omitted).

7
name only or to be straining to conform the adopting Pivot Point wholesale.
results both to Pivot Point and to the relevant
circuit’s prior caselaw. For example, in Bona- In the only other non-Seventh Circuit case
zoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d to address the issue, Stanislawski, 337 F.
218 (D.R.I. 2005), the court cited Pivot Point Supp. 2d at 1113, the court seemed similarly
extensively but reached a result that seems to circumspect about adopting Pivot Point in its
belie the Seventh Circuit’s reasoning. It held entirety. Stanislawski considered the copy-
that the design of certain measuring spoons rightability of custom-designed picture frames;
was not protectable under the Copyright Act, the plaintiff designed frames containing images
although the bowl of each spoon was designed such as cruise ships and bowling balls and
in the shape of a heart and the handle in the bearing varied expressions and lettering. Not
shape of an arrow shaft. See id. at 220. only did the court appear to resort to a crude
physical separability analysis, see id., but it
Although Pivot Point seems to require a also hedged on the Pivot Point methodology.15
contrary result—it is hard to conceive a utili-
tarian consideration animating these particular
designs of bowls and shafts—the Bonazoli b.
court ruled that “no reasonable trier of fact Thus, a clothing design that is intended to
could conclude that the artistic aspects of be used on clothing is copyrightable only to
Plaintiff’s spoons are separable from their the extent that its artistic qualities can be sep-
functional aspects.” Id. at 226. Moreover, the arated from the utilitarian nature of the gar-
Bonazoli court explicitly declined formally to ment. How to conduct the conceptual separa-
adopt the Pivot Point test: tion is, in turn, what continues to flummox
federal courts. The leading treatise in the field,
But this Court need not worry whether the NIMMER ON COPYRIGHT, discusses conceptual
Seventh Circuit’s test for conceptual sepa- separability extensively. It presents the
rability would be palatable to the First Cir- conceptual separability test somewhat dif-
cuit because Plaintiff’s claim of copyright- ferently, and one standard reads as follows:
ability also fails under every other test set “[I]t may be concluded that conceptual separa-
forth in this decision . . . . [U]nder the bility exists where there is substantial like-
Kieselstein-Cord primary/subsidiary test, it lihood that even if the article had no utilitarian
is readily apparent that [the spoon’s artistic use it would still be marketable to some sig-
elements] are not primary. Rather, it is the nificant segment of the community simply
utilitarian function of measuring spoons because of its aesthetic qualities.”16
that is primary . . . . [Plaintiff] has pre-
sented no evidence to rebut the fairly obvi-
ous conclusion that the spoons are designed
15
to serve a primary functional purpose. See id. (“Furthermore, the [c]ourt sees no ten-
sion between the ‘conceptual separability” analysis
Id. at 225 (internal citations omitted). The of Pivot Point and the Seventh Circuit’s stated
court went on to explain why the measuring disfavor for dissecting works into copyrighted and
spoon design would fail several other concep- unprotected elements.”).
tual separability tests, see id. at 225-26, a 16
1 NIMMER ON COPYRIGHT § 2.08[B][3], at 2-
methodology that betrays discomfort with 101.

8
 Nimmer’s cogent discussion of the scope of artistic designs woven or imprinted onto rugs
copyright protection in design works breaks qualify for copyright protection. See Peel &
the subject into two categories: (1) fabric de- Co. v. Rug Market, 238 F.3d 391, 394 (5th
sign and (2) dress design. Fabric designs in- Cir. 2001).
clude patterns or artistic features imprinted
onto a fabric or that appear repeatedly Cases dealing with the copyrightability of
throughout the dress fabric. Because one can clothing designs do not exclude them from
generally separate the artistic elements of this protection per se; they instead focus on the
design from the utility of the wearable gar- “separability” analysis. In Poe v. Missing Per-
ment, NIMMER ON COPYRIGHT states that fab- sons, 745 F.2d 1238 (9th Cir. 1984), for ex-
ric designs are generally entitled to copyright ample, the court awarded copyright protection
protection. On the other hand, dress designs, to a swimsuit design.19 Poe is quite enlighten-
which graphically set forth the shape, style, ing, because it involved no ordinary swimsuit.
cut, and dimensions for converting fabric into The court found that there was little chance of
a finished dress or other clothing garment, this elaborately crafted swimsuit’s ever being
generally do not have artistic elements that can worn—it appeared that it was marketed as a
be separated from the utilitarian use of the work of art.20
garment, and therefore typically do not qualify
for copyright protection.17 The Second Circuit faced a similar situation
dealing with belt buckles in Kieselstein-Cord.
The caselaw generally follows Nimmer’s The court determined that “Winchester” and
conceptual breakdown. Design of sweaters is “Vaquero” belt buckles contained artistic
usually classified as “fabric design” and is elements that were conceptually separable
entitled to copyright protection.18 Similarly, despite the buckles’ utilitarian functions. See
Kieselstein-Cord, 632 F.2d at 993. This ruling
17
See Id. NIMMER ON COPYRIGHT does not
conclude that clothing designs do not qualify for
copyright protection per se, but it rather concludes 18
(...continued)
that clothing designs rarely pass the “separability” embroidery entitled to copyright protection); Knit-
test. This is an important distinction in light of ex- waves v. Lollytogs, Ltd., 71 F.3d 996, 1002 (2d
isting case law, which can sometimes appear to Cir. 1995) (holding that fabric design, such as the
implement a categorical approach. In Whimsicali- artwork on plaintiff’s sweaters, is copyrightable).
ty Inc. v. Rubie’s Costume Co., 891 F.2d 452, 454
19
(2d Cir. 1989), for example, the court concluded In fact, the court still remanded the case to
that “[c]lothing design is not copyrightable.” As allow the jury to apply the separability test, con-
Gianna points out, this statement is dictum, be- cluding that “[n]othing in our legal training quali-
cause the holding was based on fraud of the Copy- fies us to determine as a matter of law whether [the
right Office), and no opinion of which we are swimsuit design] can be worn as an article for
aware creates any per se rule for clothing or any swimming or any other utilitarian purpose.” See
other type of design. Poe, 745 F.2d at 1242.
18 20
See, e.g., Segrets, Inc. v. Gillman Knitwear See id. (“Here, as noted above, the uncon-
Co., 207 F.3d 56, 60 (1st Cir. 2000) (failing to tradicted evidence presented below established that
dispute of district court’s finding that sweater the only reason for existence of Aquatint No. 5
(continued...) [(the swimsuit)] was as a work of art.”).

9
was premised on the belief that the buckles Confusion regarding the copyrightability of
could exist independently as a valuable artistic costumes and questions from the garment in-
commodity.21 The court nonetheless dustry led to a 1991 opinion from the United
determined that the belt buckle in question States Copyright Office, 56 FR 56530-02,
existed on the “razor’s edge of copyright law.” 1991 WL 224879 (F.R.), which concluded that
As with the court in Poe, the Kieselstein/Cord “[g]arment designs (excluding separately
court’s willingness to recognize the identified pictorial representations of designs
copyrightability of a useful article seems, at imposed upon the garment) will not be regis-
some elemental level, to turn on the capacity tered even if they contain ornamental features,
of the item to moonlight as a piece of market- or are intended to be used as historical or peri-
able artwork. od dress.” See id.23 The garment industry had
sought broader protections for elaborate gar-
c. ment designs; the Office answered that “[g]ar-
The caselaw on costume design is, to say ments are useful articles, and the designs of
the least, uneven. Generally speaking, how- useful articles are generally outside of the
ever, it tends to reflect a direct relationship be- copyright law.”24
tween a costume’s copyrightabilility and its
actual or potential market value as a stand-
alone piece of artwork.22 22
(...continued)
794 F.2d 678 (8th Cir. 1986) (holding that slipper
depicting a bear’s foot entitled to copyright pro-
21
The Vaquero buckle was created in 1978 and tection because it was essentially a fanciful artistic
became part of a series of works inspired by a book rendition of a bear’s foot); National Themes Prod.
on art nouveau design and the viewing of related v. Beck, 696 F. Supp. 1348 (S.D. Cal. 1988)
architecture on the creator’s trip to Spain. See (holding that masquerade costumes are entitled to
Kieselstein-Cord, 632 F.2d at 990. The designer copyright protection because their design and form
explained that he named the other buckle have little to do with their suitability as wearing
“Winchester” because he saw “in (his) mind’s eye apparel—they were essentially a collection of
a correlation between the art nouveau period and accessories); Whimsicality, 891 F.2d at 456
the butt of an antique Winchester rifle.” pulling (refusing to afford deference to registration of use-
“these elements together graphically.” The copy- ful articles as “soft sculptures” where “Whim-
right registration specifically identifies the buckle sicality knew full well that no reasonable observer
as a sculpture. See id. at 991. could believe the costumes were soft sculpture.”).
23
Each buckle sold for several hundreds of dol- The Office also concluded that “[f]anciful
lars, sometimes even approaching prices of $1,000. costumes will be treated as useful articles, and will
The designer received the 1979 Coty American be registered only upon a finding of separately
Fashion Critics’ Award for his work in jewelry identifiable pictorial and/or sculptural authorship.”
design and a 1978 election to the Council of The Office added that masks were generally not
Fashion Designers of America. The Metropolitan useful articles, and generally would be entitled to
Museum of Art has accepted both buckles for its copyright protection. See 56 FR 56530-02, 1991
permanent collection. See id. WL 224879 (F.R.).
22 24
See, e.g., Animal Fair Inc. v. Amfesco Indus., Id. The Office further concluded that “[p]ar-
620 F. Supp. 175 (D.C. Minn. 1985), aff’d mem., ties wishing to modify this position must address
(continued...) (continued...)

10
 Sometimes, we must favor what might be a unaware of the pitfalls of such a standard,26 but
sub-optimal prophylactic rule because it is its inherent problems are minimized when the
more determinate than the theoretically supe- rule’s ambit reaches a single type of applied
rior but hopelessly subjective one. We do not art.27
mean to suggest that the Nimmer/Poe test we
ultimately endorse is conceptually inferior, but Gianna makes no showing that its designs
we do conclude that, if it is, it is not so theo-
retically infirm that such inferiority overcomes
26
the benefits—at least at this time—of having a For example, some have argued that (1) this
more determinate rule. Despite the alleged standard is foreign to copyright; (2) it might unduly
“elegance” of the Pivot Point rule, the scope favor more conventional forms of art; and (3) it is
of that holding remains uncertain. Surely the too restrictive. See 1 NIMMER ON COPYRIGHT
Seventh Circuit considered itself as setting § 2.08[B][3], at 2-101. We do not find item (1) to
forth a test for courts to use when encounter- be particularly compelling, because all of the law-
making with respect to PGS works is interstitial,
ing any applied art but, as we have shown in
and most of it strikes us as freewheeling. Item (2)
part II.C.2.a, supra, courts have not rushed to
is a salient concern only if we apply the mar-
extend the rule beyond mannequin designs. ketability test across the spectrum of applied art-
work; here we apply it only to one art form. Item
Nor is it obvious that Pivot Point could not (3) represents the specific sacrifice we have chosen
incorporate the Nimmer rule as a means to de- to make—copyright protection may become
termine—for garment design only—whether improperly thin for certain parties, but such the-
the utilitarian and artistic elements are concep- oretical unfairness is outweighed by the interest in
tually separable. In other words, as an eviden- having a determinate rule.
tiary matter, Pivot Point could well require
27
that, to prove that design choices were domi- One might object to using a specific test to
nated by artistic considerations, a plaintiff must adjudicate the copyrightability of certain kinds of
demonstrate that the piece of applied art could applied art but not others. We note, however, that
we determine the copyrightability of maps—an
fetch a return functioning purely as an artistic
article within the ambit of the PGS provisions—by
commodity. We therefore adopt the reference to an “arrangement” or “merger” analysis
likelihood-of-marketability standard for gar- that does not at all resemble the “separability”
ment design only,25 because it appears firmly analysis of the Pivot Point cases. See, e.g., Ma-
rooted as the implicit standard courts have son v. Montgomery Data, Inc., 967 F.2d 135, 142
been using for quite some time. We are not (5th Cir. 1995) (“Because Mason’s maps possess
sufficient creativity in both the selection, coordina-
tion, and arrangement of the facts that they depict,
and as in the pictorial, graphic nature of the way
that they do so, we find no error in the district
court’s determination that Mason's maps are orig-
24 inal.”); Kern River Gas Transmission Co. v.
(...continued)
their concerns to Congress.” Coastal Corp., 899 F.2d 1458, 1464 (5th Cir.
1990) (“The problem for the copyrightability of the
25
This might most accurately be described as resulting maps, however, is not a lack of originali-
the Poe standard, even though the relevant lan- ty, but rather that the maps created express in the
guage is found in 1 NIMMER ON COPYRIGHT only effective way the idea of the location of the
§ 2.08[B][3], at 2-101. pipeline.”).

11
are marketable independently of their utilitar- certification, however, says nothing of the
ian function as casino uniforms. Gianna cor- fraud counterclaim; it certifies only the in-
rectly notes that there are costume museums fringement determination. Both parties inex-
and that they are replete with extravagant de- plicably and incorrectly assume that we have
signs that might also have utilitarian qualities, appellate jurisdiction and proceed directly to
but Gianna does not demonstrate that its de- argument on the merits.
signs describe such material. We therefore af-
firm the denial of summary judgment. We may exercise only proper appellate jur-
isdiction, even if doing so requires us to con-
III. sider the jurisdictional question sua sponte.
Harrah’s counterclaimed against Gianna for See Chunn v. Chunn, 106 F.3d 1239, 1241
fraud on the Copyright Office. The district (5th Cir.1997). We lack jurisdiction over the
court denied Gianna’s motion for summary fraud counterclaim and dismiss the appeal of
judgment on the counterclaim. Denials of that issue.
summary judgment are typically not final or-
ders28 and are generally appealable only as pro- IV.
vided in 28 U.S.C. 1292(b), which requires a The Copyright Act provides that “in its
district court’s designation. Neither party discretion” a district court may “award a rea-
points to such designation, nor can we locate sonable attorney’s fee to the prevailing party
one in the record. as part of the costs.” 17 U.S.C. § 505. In a
separate appeal that we have consolidated with
Both parties instead premise jurisdiction for the case on the merits, Gianna argues that the
this issue on Federal Rule of Civil Procedure district court erred in granting Harrah’s’
54(b).29 The district court’s rule 54(b) motion for attorney’s fees. The court ruled on
this motion from the bench but declined to
28
quantify its award of fees until a later hearing.
See Skelton v. Camp, 234 F.3d 292, 295 (5th
Cir. 2000) (“A denial of summary judgment is not A.
a final or der within the meaning of 28 U.S.C.
We have jurisdiction over the rule 54(b)
§ 1291.”) (citing Lemoine v. New Horizons Ranch
order granting fees as an order designated by
& Ctr., Inc., 174 F.3d 629, 633 (5th Cir.1999)).
the district court as immediately appealable.
29
That rule states: We review an award of attorney’s fees for
abuse of discretion. See Alameda Films S A
When more than one claim for relief is pre- de C V v. Authors Rights Restoration Corp.,
sented in an action . . . the court may direct the 331 F.3d 472, 483 (5th Cir. 2003).
entry of a final judgment as to one or more but
fewer than all of the claims or parties only upon
29
an express determination that there is no just (...continued)
reason for delay and upon an express direction terminate the action as to any of the claims or
for the entry of judgment. In the absence of parties, and the order or other form of decision
such determination and direction, any order or is subject to revision at any time before the
other form of decision . . . which adjudicates entry of judgment adjudicating all the claims
fewer than all the claims or the rights and and the rights and liabilities of all the parties.
liabilities of fewer than all the parties shall not
(continued...) FED. R. CIV. P. 54(b).

12
 B. the court awarded fees. The hearing transcript
The district court did not consider any of contains only the following passage:
the four factors set forth in Fogerty v. Fan-
tasy, Inc., 510 U.S. 517 (1994), in which the I think [Harrah’s has] a better side of the
Court rejected the “British Rule,” used in picture . . . . The Motion for Entitlement to
some circuits, whereby the prevailing party in Attorney’s Fees is granted. The Fifth Cir-
a copyright case is awarded attorney’s fees as cuit law, as I appreciate it, indicates that
a matter of course. The Court instead favored it’s the rule rather than the exception that in
a more discretionary approach: cases of this nature fees be awarded. So, if
my ruling is upheld by the Fifth Circuit,
[C]opyright law ultimately serves the pur- we’ll schedule a hearing to quantify rea-
poses of enriching the general public sonable attorney’s fees. So, the motion is
through access to creative works, it is pe- granted.
culiarly important that the boundaries of
copyright law be demarcated as a clearly as We cannot review a district court’s decision
possible. To that end, defendants who seek for abuse of discretion where that court
to advance a variety of meritorious copy- effectively delegates the underlying issue to us
right defenses should be encouraged to lit- without making a substantive ruling of its own.
igate them to the same extent that plaintiffs Although we view this suit to be far from
are encouraged to litigate meritorious frivolous—this is a close question of law—re-
claims of infringment. mand is appropriate. The district court should
provide a Fogerty analysis in its ensuing
Id. at 527. Fogerty instructed courts, in deter- opinion so that its ruling can, if needed, be
mining whether to award attorney’s fees, to reviewed on appeal.
consider (1) frivolousness; (2) motivation;
(3) objective unreasonableness; and (4) the In summary, we AFFIRM the summary
need in particular circumstances to advance judgment in favor of Harrah’s on the
considerations of compensation and deter- infringement claim, DISMISS the appeal
rence. See id. at 534 n.19.30 regarding the denial of summary judgment to
Gianna on the counterclaim, and VACATE
The district court, without explanation, just and REMAND the order awarding attorney’s
assumed that, if it erred, this court would fix fees.31
the mistake. The order gives no reason why

30
The Court elaborated that “[w]e agree that
such factors may used to guide courts’ discretion,
so long as such factors are faithful to the purposes
of the Copyright Act and are applied to prevailing
31
plaintiffs and defendants in an even-handed man- In the remanded proceedings, the trial court
ner.” (Emphasis added.) See Fogerty, 510 U.S. at must (1) rule on the fraud on the Copyright Office
535 n.19. We interpret this passage as directing claim such that it is appealable and (2) apply the
lower courts to apply these factors symmetrically, Fogerty analysis to the attorney’s fees question. It
but not in such a way that reduces them to an end- need not try the infringement claim, as we have
around to the British Rule. upheld the denial of summary judgment.

13