Galiano, et al v. Harrah's Oprt Co Inc, et al

United States Court of Appeals
Fifth Circuit
F I L E D
July 7, 2005
Charles R. Fulbruge III
Clerk
REVISED JULY 8, 2005
In the
United States Court of Appeals
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,
Circuit Judges.
JERRY E. SMITH, Circuit Judge:
Gianna, Inc. (“Gianna”), sued Harrah’s En-
tertainment, Inc. (“Harrah’s”), for copyright
infringement. The district court granted Har-
rah’s’ motion for summary judgment on the in-
fringement claim and denied Gianna’s motion
for summary judgment on Harrah’s’ fraud on
the Copyright Office counterclaim. After the
court issued its judgment, in a separate motion
Harrah’s requested, and the district court
granted, attorney’s fees. Gianna timely
appealed (1) the summary judgment against its
copyright infringement claim; (2) the denial of
its summary judgment motion involving Har-

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

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3
Three months after obtaining the copyright
protection, Gianna (with Galiano individually
as co-plaintiff) sued in federal district court al-
leging that Harrah’s had breached the May
1996 settlement agreement4 and committed
copyright infringement by continuing to use
and order Gianna-designed uniforms. Harrah’s
counterclaimed for fraud and misuse of the
Copyright Office, asserting that Gianna had
failed to disclose that the allegedly copyrighted
work was not original and that it intended to
cover items that are not properly
copyrightable.
II.
To prove copyright infringement, a plaintiff
must show ownership of a valid copyright and
actionable copying. See Positive Black Talk,
Inc. v. Cash Money Records, Inc., 394 F.3d
357, 367 (5th Cir. 2004). Accordingly, the
district court first determined the extent of Gi-
anna’s copyright in her “registered” works.
Because copyright law does not allow one to
copyright “clothing designs” in which the ar-
tistic and utilitarian qualities are indivisible, the
court reasoned, Gianna’s copyright could not
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
the extent that it protects the two-dimensional
artwork, i.e., the illustrations and silkscreens
that comprise the collection. We elaborate on
this first holding somewhat extensively here.
The district court relied on much of the ma-
terial we examine in part II.C.2.b, infra, in
holding that Gianna’s copyright did not extend
to the uniform designs. The court explained
that copyright protection would be available
only for a design’s artistic expression and not
for the design of the clothing itself. Because
the court could not equate the design of the
uniforms’ buttons, pleats, and collars—though
admittedly very creative—to an artistic draw-
ing on a shirt or a fabric design, it concluded
that the design’s artistic and utilitarian ele-
ments were conceptually indivisible and there-
fore not copyrightable subject matter.
Gianna also relies heavily on the deposition
and report of Bonnie Belleau, Ph.D.,5 who
3(...continued)
Chef Hats: uniquely shaped like vegetables
Uniform Shirt: short sleeves, piped man-
darin collar with center front notch, jac-
quard fabric trim on a concealed button or
snap placket, with additional jacquard fab-
ric stripes down either side, piped cuff
trim, inverted center back pleat with star
at the top
Tuxedo Jackets: distinctive shawl collar
styling with a deep V neckline
Uniform Vests: female has princess lines
with unique buckle closure, deep V neck-
line and a semi-fitted look; male vest also
has deep V neckline and two buckle ac-
cents on one side of the front
Uniform Shirt: color-blocked mandarin
collar and concentric flanges on front ac-
centing the princess lines, front and sleeves
color-blocked
4 On April 10, 2002, the district court granted
Harrah’s’ motion for partial summary judgment
dismissing the breach of contract claim. A panel of
this court affirmed the dismissal on May 14, 2003.
5 Belleau is Professor of Apparel Design and
Production, LSU School of Human Ecology. It ap-
pears that the primary purpose of her report is to
(continued...)

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4
opined that the Gianna uniform designs are
highly artistic and that the utilitarian and aes-
thetic elements are easily separable. Belleau
testified that the Gianna uniforms have a “cos-
tume look” as distinguished from a “functional
uniform appearance” and therefore should
qualify for copyright protection as artistic
costumes.6 Gianna argues that Belleau’s
report and testimony demonstrate that these
designs are not intended merely to enhance the
garment’s functionality, but to render the de-
sign a creative asset.7
The district court noted that Belleau set out
in some detail the artistic features of the uni-
forms, but the court found that these features
were nothing more than “useful design features
of wearing apparel.” Because none of these
design features has intrinsic value as a work of
art that can exist independently of the uniform
wearing apparel, the district court concluded,
they do not qualify for copyright protection.
Next, the court analyzed whether Harrah’s
committed “actionable copying” of Gianna’s
collection, in light of the previously deter-
mined scope of copyright. The court differen-
tiated between “direct infringement” and “con-
tributory or vicarious infringement,” which are
separate and distinct causes of action.
In her original and amended complaints,
Gianna alleged that Harrah’s “reproduced the
copyrighted work in copies” and “prepared de-
rivative works based on the copyrighted works
throughout its gambling empire.”8 Therefore,
the court concluded, Gianna based its claim on
a theory of direct infringement. In its opposi-
tion to summary judgment, however, Gianna
alleged that Harrah’s would be liable for con-
tributory infringement even if there was insuf-
ficient evidence of direct infringement. The
5(...continued)
show that the designs manufactured by All-Bilt for
Harrah’s after the relationship with Gianna ended
are “substantially similar” to the designs from the
Gianna collection.
6 In her report, Belleau discusses the artistic
qualities of the uniforms such as the
logo cuff, a piped mandarin collar with a notch
at center front, the inverted center back pleat
with a star at the top, jacquard fabric trim on a
concealed button or snap placket, jacquard fab-
ric stripes down either side, piped cuff trim,
princess lines in front and back, star buttons, a
flange at the shoulder, concentric flanges on the
jacket front, asymmetric closures, button
designs, bib front, placement of buckle clos-
ures, color blocking, and combinations of fab-
rics, style lines, trim, and silhouette.
She concludes that “[t]he unique design features
are artistic characteristics that are not critical to the
functional aspects of the garments, therefore the
collection qualifies for copyright.”
7 For example, Gianna notes that its design of
the “jacquard fabric stripes down either side” look
like suspenders, but are not; this demonstrates that
the designer’s intent to create an asset that was
primarily artistic. Gianna also offers the uniform
jacket’s “star buttons,” which, according to Bel-
(continued...)
7(...continued)
leau, “are very distinctive and unique and go be-
yond the basic functional requirements of a button,
and, as such were copyrighted.”
8 We do not extensively address the derivative
works argument in this opinion. Although we de-
cline to do so because the argument is under-the-
orized, we also note that to find infringement based
on a derivative works right (the artwork itself is
protected) would be to usurp a fairly developed
(albeit hotly contested) applied-art jurisprudence
that takes the difference between the drawings and
the objects depicted in them into full consideration.

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

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6
17 U.S.C. § 101.
C.
The test for whether Gianna can copyright
the designs proceeds in two steps. First, we
must determine whether the asset for which
the creator seeks copyright protection is a
“useful” article. If it is not, there is no PGS
bar to copyright protection. If it is, the panel
must determine whether the “design incorpor-
ates [PGS] features that can be identified sep-
arately from, and are capable of existing inde-
pendently of, the utilitarian aspects of the ar-
ticle.” Id. Answering the first question is
easy; answering the second is not.
1.
There is little doubt that clothing possesses
utilitarian and aesthetic value. “It is common
ground . . . among the courts that have exam-
ined this issue [that the 1976 Copyright Act’s
PGS provisions were] intended to distinguish
creative works that enjoy protection from the
elements of industrial design that do not.” See
Pivot Point Int’l, Inc. v. Charlene Prods., Inc.,
372 F.3d 913, 920-21 (7th Cir. 2004) (en
banc). The hard questions involve the meth-
odology for severing creative elements from
industrial design features.
2.
Although the statutory language ostensibly
requires that two conditions be satisfied, the
consensus among courts and academics is that,
because the statutory language was essentially
lifted from a case predating the legislation,11
§ 101’s separateness requirements implement
what is called the “conceptual separability
test.”12 There are at least six distinct vari-
ations of that test,13 and courts “have twisted
11 The current copyright laws expressly imple-
ment the holding in Mazer v. Stein, 347 U.S. 201
(1954). In Mazer, the Court upheld the a copyright
in a statue used as a lamp base. The House Report
accompanying the 1976 Act refers to “the rule of
Mazer, as affirmed by the bill.” See H.R. REP.
(continued...)
11(...continued)
NO. 1476, 94th Cong., 2d Sess. 105 (1976)
(hereinafter “House Report”).
12 See Pivot Point, 372 F.3d at 923 n.8; Su-
perior Form Builders, Inc. v. Dan Chase Taxider-
my Supply Co., 74 F.3d 488, 494 (4th Cir. 1996)
(asking whether functional aspects of animal man-
nequins are “conceptually separable from the
works’ sculptural features”); Brandier Int’l, Inc. v.
Cascade Pac. Lumber Co., 834 F.2d 1142, 1144
(2d Cir. 1987) (stating that “‘[c]onceptual
separability is thus alive and well”); Carol Barn-
hart Inc. v. Econ. Cover Corp., 773 F.2d 411, 418
(2d Cir. 1985) (judging copyrightability of man-
nequin torsos based on whether “forms possess
aesthetic or artistic features that are physically or
conceptually separable from the forms’ use as
utilitarian objects to display the clothes”); Norris
Indus., Inc. v. Int’l Tel. & Tel. Corp., 696 F.2d
918, 923 (11th Cir. 1983) (“Both case law and
legislative history indicate that separability en-
compasses works of art that are either physically
severable from the utilitarian article or conceptu-
ally severable [sic].”); Kieselstein-Cord, 632 F.2d
at 993 (applying conceptual severability test).
13 See Kieselstein-Cord, 632 F.2d at 993 (ex-
amining whether artistic features are “primary” and
utilitarian features are “subsidiary”); Carol
Barnhart, 773 F.2d at 422 (Newman, J., dissent-
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-
tion”); Brandir Int’l, Inc. v. Cascade Pac. Lumber
Co., 834 F.2d at 1142, 1143 (adopting a position
espoused by Professor Robert Denicola, whether
the artistic design was animated by functional
considerations); 1 NIMMER ON COPYRIGHT §
2.08[B][3], at 2-101 (2004) (stating the test as
(continued...)

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7
themselves into knots trying to create a test to
effectively ascertain whether the artistic as-
pects of a useful article can be identified sep-
arately from and exist independently of the ar-
ticle’s utilitarian function.” Masquerade Nov-
elty, Inc. v. Unique Indus., Inc., 912 F.2d 663,
670 (3d Cir. 1990).
Pivot Point is a sprawling, comprehensive
exegesis of conceptual separability jurispru-
dence. See Pivot Point, 372 F.3d at 920-32.
Although it is not binding on this court, Pivot
Point represents, by orders of magnitude, the
most thorough and persuasive analysis of this
question in any circuit.
That survey revealed several things. First,
it concluded that “the circuits that have ad-
dressed [this question] have recognized that
the wording of the statute does not supply cat-
egorical direction, but rather requires the
Copyright Office and the courts ‘to continue
their efforts to distinguish applied art and in-
dustrial design.’” Id. at 921 (internal citations
omitted). Second, and more importantly, it re-
framed the conceptual separability test:
Conceptual separability exists, therefore,
when the artistic aspects of an article can be
“conceptualized as existing independently
of their utilitarian function.” This in-
dependence is necessarily informed by
“whether the design elements can be identi-
fied as reflecting the designers artistic judg-
ment exercised independently of functional
influence.” If the elements do reflect the
independent, artistic judgment of the de-
signer, conceptual separability exists. Con-
versely, when the design of a useful article
is “as much the result of utilitarian
pressures as aesthetic choices,” the useful
and aesthetic elements are not conceptually
separable.
Id. at 931 (citations omitted). In other words,
where artistic discretion dominates practical
necessity as the driving force behind design
choices, a useful article may nonetheless quali-
fy for protection as a PGS work. Third, Pivot
Point strongly suggests that the contested fea-
tures may be considered in the aggregate. See
id. at 925 (quoting Carol Barnhart, 773 F.2d
at 418).14
Acknowledging the comprehensiveness of
that opinion, however, is not tantamount to
applying it here. We do not reject the Pivot
Point test in this circuit, but we decline to ap-
ply it to the instant facts for several reasons.
a.
First, the degree of influence Pivot Point
will ultimately exert is manifestly uncertain.
Courts considering PGS issues post-Pivot
Point seem either to be adopting the test in
13(...continued)
whether the useful article “would still be market-
able to some significant segment of the community
simply because of its aesthetic qualities.”); 1 PAUL
GOLDSTEIN, COPYRIGHT § 2.5.3, at 2:67 (1996)
(asking whether the artistic features “can stand
alone as a work of art traditionally conceived, and
. . . the useful article in which it is embodied would
be equally useful without it,”); 1 WILLIAM F.
PATRY, COPYRIGHT LAW & PRACTICE 285 (1994)
(suggesting that separability may actually be a
frivolous requirement and that courts may be better
served by relying on an alternate, two-step
inquiry).
14 See Stanislawski v. Jordan, 337 F. Supp. 2d
1103, 1113 (E.D. Wis. 2004), discussed infra
(“[W]hen looking at the Stanislawski’s frames, the
arrangement of common elements may be an orig-
inal and protectable artistic element even if the re-
spective elements are themselves common and un-
protectable.”) (internal citations omitted).

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8
name only or to be straining to conform the
results both to Pivot Point and to the relevant
circuit’s prior caselaw. For example, in Bona-
zoli v. R.S.V.P. Int’l, Inc., 353 F. Supp. 2d
218 (D.R.I. 2005), the court cited Pivot Point
extensively but reached a result that seems to
belie the Seventh Circuit’s reasoning. It held
that the design of certain measuring spoons
was not protectable under the Copyright Act,
although the bowl of each spoon was designed
in the shape of a heart and the handle in the
shape of an arrow shaft. See id. at 220.
Although Pivot Point seems to require a
contrary result—it is hard to conceive a utili-
tarian consideration animating these particular
designs of bowls and shafts—the Bonazoli
court ruled that “no reasonable trier of fact
could conclude that the artistic aspects of
Plaintiff’s spoons are separable from their
functional aspects.” Id. at 226. Moreover, the
Bonazoli court explicitly declined formally to
adopt the Pivot Point test:
But this Court need not worry whether the
Seventh Circuit’s test for conceptual sepa-
rability would be palatable to the First Cir-
cuit because Plaintiff’s claim of copyright-
ability also fails under every other test set
forth in this decision . . . . [U]nder the
Kieselstein-Cord primary/subsidiary test, it
is readily apparent that [the spoon’s artistic
elements] are not primary. Rather, it is the
utilitarian function of measuring spoons
that is primary . . . . [Plaintiff] has pre-
sented no evidence to rebut the fairly obvi-
ous conclusion that the spoons are designed
to serve a primary functional purpose.
Id. at 225 (internal citations omitted). The
court went on to explain why the measuring
spoon design would fail several other concep-
tual separability tests, see id. at 225-26, a
methodology that betrays discomfort with
adopting Pivot Point wholesale.
In the only other non-Seventh Circuit case
to address the issue, Stanislawski, 337 F.
Supp. 2d at 1113, the court seemed similarly
circumspect about adopting Pivot Point in its
entirety. Stanislawski considered the copy-
rightability of custom-designed picture frames;
the plaintiff designed frames containing images
such as cruise ships and bowling balls and
bearing varied expressions and lettering. Not
only did the court appear to resort to a crude
physical separability analysis, see id., but it
also hedged on the Pivot Point methodology.15
b.
Thus, a clothing design that is intended to
be used on clothing is copyrightable only to
the extent that its artistic qualities can be sep-
arated from the utilitarian nature of the gar-
ment. How to conduct the conceptual separa-
tion is, in turn, what continues to flummox
federal courts. The leading treatise in the field,
NIMMER ON COPYRIGHT, discusses conceptual
separability extensively. It presents the
conceptual separability test somewhat dif-
ferently, and one standard reads as follows:
“[I]t may be concluded that conceptual separa-
bility exists where there is substantial like-
lihood that even if the article had no utilitarian
use it would still be marketable to some sig-
nificant segment of the community simply
because of its aesthetic qualities.”16
15 See id. (“Furthermore, the [c]ourt sees no ten-
sion between the ‘conceptual separability” analysis
of Pivot Point and the Seventh Circuit’s stated
disfavor for dissecting works into copyrighted and
unprotected elements.”).
16 1 NIMMER ON COPYRIGHT § 2.08[B][3], at 2-
101.

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

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10
was premised on the belief that the buckles
could exist independently as a valuable artistic
commodity.21 The court nonetheless
determined that the belt buckle in question
existed on the “razor’s edge of copyright law.”
As with the court in Poe, the Kieselstein/Cord
court’s willingness to recognize the
copyrightability of a useful article seems, at
some elemental level, to turn on the capacity
of the item to moonlight as a piece of market-
able artwork.
c.
The caselaw on costume design is, to say
the least, uneven. Generally speaking, how-
ever, it tends to reflect a direct relationship be-
tween a costume’s copyrightabilility and its
actual or potential market value as a stand-
alone piece of artwork.22
Confusion regarding the copyrightability of
costumes and questions from the garment in-
dustry led to a 1991 opinion from the United
States Copyright Office, 56 FR 56530-02,
1991 WL 224879 (F.R.), which concluded that
“[g]arment designs (excluding separately
identified pictorial representations of designs
imposed upon the garment) will not be regis-
tered even if they contain ornamental features,
or are intended to be used as historical or peri-
od dress.” See id.23 The garment industry had
sought broader protections for elaborate gar-
ment designs; the Office answered that “[g]ar-
ments are useful articles, and the designs of
useful articles are generally outside of the
copyright law.”24
21 The Vaquero buckle was created in 1978 and
became part of a series of works inspired by a book
on art nouveau design and the viewing of related
architecture on the creator’s trip to Spain. See
Kieselstein-Cord, 632 F.2d at 990. The designer
explained that he named the other buckle
“Winchester” because he saw “in (his) mind’s eye
a correlation between the art nouveau period and
the butt of an antique Winchester rifle.” pulling
“these elements together graphically.” The copy-
right registration specifically identifies the buckle
as a sculpture. See id. at 991.
Each buckle sold for several hundreds of dol-
lars, sometimes even approaching prices of $1,000.
The designer received the 1979 Coty American
Fashion Critics’ Award for his work in jewelry
design and a 1978 election to the Council of
Fashion Designers of America. The Metropolitan
Museum of Art has accepted both buckles for its
permanent collection. See id.
22 See, e.g., Animal Fair Inc. v. Amfesco Indus.,
620 F. Supp. 175 (D.C. Minn. 1985), aff’d mem.,
(continued...)
22(...continued)
794 F.2d 678 (8th Cir. 1986) (holding that slipper
depicting a bear’s foot entitled to copyright pro-
tection because it was essentially a fanciful artistic
rendition of a bear’s foot); National Themes Prod.
v. Beck, 696 F. Supp. 1348 (S.D. Cal. 1988)
(holding that masquerade costumes are entitled to
copyright protection because their design and form
have little to do with their suitability as wearing
apparel—they were essentially a collection of
accessories); Whimsicality, 891 F.2d at 456
(refusing to afford deference to registration of use-
ful articles as “soft sculptures” where “Whim-
sicality knew full well that no reasonable observer
could believe the costumes were soft sculpture.”).
23 The Office also concluded that “[f]anciful
costumes will be treated as useful articles, and will
be registered only upon a finding of separately
identifiable pictorial and/or sculptural authorship.”
The Office added that masks were generally not
useful articles, and generally would be entitled to
copyright protection. See 56 FR 56530-02, 1991
WL 224879 (F.R.).
24 Id. The Office further concluded that “[p]ar-
ties wishing to modify this position must address
(continued...)

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11
Sometimes, we must favor what might be a
sub-optimal prophylactic rule because it is
more determinate than the theoretically supe-
rior but hopelessly subjective one. We do not
mean to suggest that the Nimmer/Poe test we
ultimately endorse is conceptually inferior, but
we do conclude that, if it is, it is not so theo-
retically infirm that such inferiority overcomes
the benefits—at least at this time—of having a
more determinate rule. Despite the alleged
“elegance” of the Pivot Point rule, the scope
of that holding remains uncertain. Surely the
Seventh Circuit considered itself as setting
forth a test for courts to use when encounter-
ing any applied art but, as we have shown in
part II.C.2.a, supra, courts have not rushed to
extend the rule beyond mannequin designs.
Nor is it obvious that Pivot Point could not
incorporate the Nimmer rule as a means to de-
termine—for garment design only—whether
the utilitarian and artistic elements are concep-
tually separable. In other words, as an eviden-
tiary matter, Pivot Point could well require
that, to prove that design choices were domi-
nated by artistic considerations, a plaintiff must
demonstrate that the piece of applied art could
fetch a return functioning purely as an artistic
commodity. We therefore adopt the
likelihood-of-marketability standard for gar-
ment design only,25 because it appears firmly
rooted as the implicit standard courts have
been using for quite some time. We are not
unaware of the pitfalls of such a standard,26 but
its inherent problems are minimized when the
rule’s ambit reaches a single type of applied
art.27
Gianna makes no showing that its designs
24(...continued)
their concerns to Congress.”
25 This might most accurately be described as
the Poe standard, even though the relevant lan-
guage is found in 1 NIMMER ON COPYRIGHT
§ 2.08[B][3], at 2-101.
26 For example, some have argued that (1) this
standard is foreign to copyright; (2) it might unduly
favor more conventional forms of art; and (3) it is
too restrictive. See 1 NIMMER ON COPYRIGHT
§ 2.08[B][3], at 2-101. We do not find item (1) to
be particularly compelling, because all of the law-
making with respect to PGS works is interstitial,
and most of it strikes us as freewheeling. Item (2)
is a salient concern only if we apply the mar-
ketability test across the spectrum of applied art-
work; here we apply it only to one art form. Item
(3) represents the specific sacrifice we have chosen
to make—copyright protection may become
improperly thin for certain parties, but such the-
oretical unfairness is outweighed by the interest in
having a determinate rule.
27 One might object to using a specific test to
adjudicate the copyrightability of certain kinds of
applied art but not others. We note, however, that
we determine the copyrightability of maps—an
article within the ambit of the PGS provisions—by
reference to an “arrangement” or “merger” analysis
that does not at all resemble the “separability”
analysis of the Pivot Point cases. See, e.g., Ma-
son v. Montgomery Data, Inc., 967 F.2d 135, 142
(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-
inal.”); Kern River Gas Transmission Co. v.
Coastal Corp., 899 F.2d 1458, 1464 (5th Cir.
1990) (“The problem for the copyrightability of the
resulting maps, however, is not a lack of originali-
ty, but rather that the maps created express in the
only effective way the idea of the location of the
pipeline.”).

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12
are marketable independently of their utilitar-
ian function as casino uniforms. Gianna cor-
rectly notes that there are costume museums
and that they are replete with extravagant de-
signs that might also have utilitarian qualities,
but Gianna does not demonstrate that its de-
signs describe such material. We therefore af-
firm the denial of summary judgment.
III.
Harrah’s counterclaimed against Gianna for
fraud on the Copyright Office. The district
court denied Gianna’s motion for summary
judgment on the counterclaim. Denials of
summary judgment are typically not final or-
ders28 and are generally appealable only as pro-
vided in 28 U.S.C. 1292(b), which requires a
district court’s designation. Neither party
points to such designation, nor can we locate
one in the record.
Both parties instead premise jurisdiction for
this issue on Federal Rule of Civil Procedure
54(b).29 The district court’s rule 54(b)
certification, however, says nothing of the
fraud counterclaim; it certifies only the in-
fringement determination. Both parties inex-
plicably and incorrectly assume that we have
appellate jurisdiction and proceed directly to
argument on the merits.
We may exercise only proper appellate jur-
isdiction, even if doing so requires us to con-
sider the jurisdictional question sua sponte.
See Chunn v. Chunn, 106 F.3d 1239, 1241
(5th Cir.1997). We lack jurisdiction over the
fraud counterclaim and dismiss the appeal of
that issue.
IV.
The Copyright Act provides that “in its
discretion” a district court may “award a rea-
sonable attorney’s fee to the prevailing party
as part of the costs.” 17 U.S.C. § 505. In a
separate appeal that we have consolidated with
the case on the merits, Gianna argues that the
district court erred in granting Harrah’s’
motion for attorney’s fees. The court ruled on
this motion from the bench but declined to
quantify its award of fees until a later hearing.
A.
We have jurisdiction over the rule 54(b)
order granting fees as an order designated by
the district court as immediately appealable.
We review an award of attorney’s fees for
abuse of discretion. See Alameda Films S A
de C V v. Authors Rights Restoration Corp.,
331 F.3d 472, 483 (5th Cir. 2003).
28 See Skelton v. Camp, 234 F.3d 292, 295 (5th
Cir. 2000) (“A denial of summary judgment is not
a final or der within the meaning of 28 U.S.C.
§ 1291.”) (citing Lemoine v. New Horizons Ranch
& Ctr., Inc., 174 F.3d 629, 633 (5th Cir.1999)).
29 That rule states:
When more than one claim for relief is pre-
sented in an action . . . the court may direct the
entry of a final judgment as to one or more but
fewer than all of the claims or parties only upon
an express determination that there is no just
reason for delay and upon an express direction
for the entry of judgment. In the absence of
such determination and direction, any order or
other form of decision . . . which adjudicates
fewer than all the claims or the rights and
liabilities of fewer than all the parties shall not
(continued...)
29(...continued)
terminate the action as to any of the claims or
parties, and the order or other form of decision
is subject to revision at any time before the
entry of judgment adjudicating all the claims
and the rights and liabilities of all the parties.
FED. R. CIV. P. 54(b).

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13
B.
The district court did not consider any of
the four factors set forth in Fogerty v. Fan-
tasy, Inc., 510 U.S. 517 (1994), in which the
Court rejected the “British Rule,” used in
some circuits, whereby the prevailing party in
a copyright case is awarded attorney’s fees as
a matter of course. The Court instead favored
a more discretionary approach:
[C]opyright law ultimately serves the pur-
poses of enriching the general public
through access to creative works, it is pe-
culiarly important that the boundaries of
copyright law be demarcated as a clearly as
possible. To that end, defendants who seek
to advance a variety of meritorious copy-
right defenses should be encouraged to lit-
igate them to the same extent that plaintiffs
are encouraged to litigate meritorious
claims of infringment.
Id. at 527. Fogerty instructed courts, in deter-
mining whether to award attorney’s fees, to
consider (1) frivolousness; (2) motivation;
(3) objective unreasonableness; and (4) the
need in particular circumstances to advance
considerations of compensation and deter-
rence. See id. at 534 n.19.30
The district court, without explanation, just
assumed that, if it erred, this court would fix
the mistake. The order gives no reason why
the court awarded fees. The hearing transcript
contains only the following passage:
I think [Harrah’s has] a better side of the
picture . . . . The Motion for Entitlement to
Attorney’s Fees is granted. The Fifth Cir-
cuit law, as I appreciate it, indicates that
it’s the rule rather than the exception that in
cases of this nature fees be awarded. So, if
my ruling is upheld by the Fifth Circuit,
we’ll schedule a hearing to quantify rea-
sonable attorney’s fees. So, the motion is
granted.
We cannot review a district court’s decision
for abuse of discretion where that court
effectively delegates the underlying issue to us
without making a substantive ruling of its own.
Although we view this suit to be far from
frivolous—this is a close question of law—re-
mand is appropriate. The district court should
provide a Fogerty analysis in its ensuing
opinion so that its ruling can, if needed, be
reviewed on appeal.
In summary, we AFFIRM the summary
judgment in favor of Harrah’s on the
infringement claim, DISMISS the appeal
regarding the denial of summary judgment to
Gianna on the counterclaim, and VACATE
and REMAND the order awarding attorney’s
fees.31
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
plaintiffs and defendants in an even-handed man-
ner.” (Emphasis added.) See Fogerty, 510 U.S. at
535 n.19. We interpret this passage as directing
lower courts to apply these factors symmetrically,
but not in such a way that reduces them to an end-
around to the British Rule.
31 In the remanded proceedings, the trial court
must (1) rule on the fraud on the Copyright Office
claim such that it is appealable and (2) apply the
Fogerty analysis to the attorney’s fees question. It
need not try the infringement claim, as we have
upheld the denial of summary judgment.

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