Cases of Interest: Kieselstein-Cord v. Accessories By Pearl, Inc.

Case(s): U.S. District Court, S.D.N.Y – Case No. 80 Civ. 1029(GLG); U.S. Court of Appeals, Second Circuit – Case No. 1351

Facts: Barry Kieselstein-Cord founded his namesake line, Kieselstein-Cord, in 1972. Kieselstein-Cord designs, manufactures exclusively by hand-craftsmanship, and sells fashion accessories.

In the 1970s, the designer created the Vaquero and Winchester buckles. The Vaquero buckle, created in 1978, was part of a series of works that was inspired by a book on design of the art nouveau school. The buckle was registered with the Copyright Office on March 3, 1980, with a publication date of June 1, 1978, as "jewelry," although the designer’s contribution was listed on as "original sculpture and design."

The Winchester buckle in particular has had great success in the marketplace: more than 4,000 belts with Winchester buckles were sold from 1976 to early 1980, and in 1979 sales of the belts amounted to 95% of more than $300,000 in jewelry sales. Kieselstein-Cord registered a claim to copyright for the Winchester buckle, which became effective August 22, 1977.

To produce the two buckles, Kieselstein-Cord worked from original renderings which he had conceived and sketched. He then carved by hand a waxen prototype of each of the works from which molds were made for casting the objects in gold and silver.

Accessories By Pearl, Inc. (Pearl), according to Kieselstein-Cord, made, sold, distributed, and/or advertised copies of these two buckles. The only difference between the buckles from Pearl and Kieselstein-Cord is that the former used common metals, while the latter used precious metals. In fact, some of Pearl’s customers referred to Pearl’s buckles as “Barry K Copy," "BK copy," and even "Barry Kieselstein Knock-off."

Kieselstein-Cord filed suit for copyright and trademark infringement as well as unfair competition. Pearl admitted to copying and selling its copies of the Vaquero and to selling copies of the Winchester, but filed for summary judgement on the grounds that Kieselstein-Cord’s copyrights weren’t valid.

United States District Court, S. D. New York

District Judge Gerard Goettel found for Pearl. The court looked at the Copyright Act and noted that works with utilitarian features are only copyrightable to the extent that these features are “separately identifiable and ‘capable of existing independently as a work of art.’” The court ultimately said that it “does not see in these buckles ‘pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of’ the buckles.”

United States Court of Appeals, Second Circuit

Kieselstein-Cord appealed the district court’s decision.

In 1980, the United States Court of Appeals for the Second Circuit reversed Judge Goettel’s holding, finding that Kieselstein-Cord’s buckles were copyrightable. Circuit Judge James Oakes, writing for the court, noted that “This case is on a razor's edge of copyright law. It involves belt buckles, utilitarian objects which as such are not copyrightable. But these are not ordinary buckles; they are sculptured designs cast in precious metals-decorative in nature and used as jewelry is, principally for ornamentation.”

Analysis: In making its decision, the Court of Appeals considered the fact that there are two types of separability where copyright law is concerned: physical and conceptual separability. The court found conceptually separable elements in Kieselstein-Cord’s belt buckles. However, the court did create a readily discernable test for determining conceptual separability. Instead, it simply noted that it saw in the belt buckles “conceptually separable sculptural elements, as apparently have the buckles' wearers who have used them as ornamentation for parts of the body other than the waist.” The court went on to say that “the primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function.”

District Judge Jack Weinstein dissented, noting that while the belt buckles in question were aesthetically pleasing, “their innovations of form are inseparable from the important function they serve-helping to keep the tops of trousers at waist level.”

Conclusion: This case established the rule that design elements on apparel and accessory items may be copyrighted if those items are physically or conceptually separable from the useful aspects. It is particularly important in fashion because it gives hope that copyright protection will apply to designs that are useful, but also have ornamental elements that can exist independent of the utilitarian aspects.

Kieselstein-Cord is often described as a ‘landmark’ case and cited as the archetypal example of copyright protection being accorded to ‘separable’ artistic components of fashion….However, recent attempts to invoke Kieselstein-Cord in favor of expanded protection have largely failed.” (Fashion Law: A Guide for Designers, Fashion Executives, and Attorneys, Second Edition.)