Case(s): Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App’x 42 (2d Cir. 2012)
Jovani is a designer and manufacturer of women’s dresses, in particular evening dresses, gowns, and prom dresses. In 2010, Jovani obtained copyright registrations for ten catalogs that depicted Jovani artwork incorporated in dresses. That same year, Jovani filed suit against several competing manufacturers and retailers, principally under the Copyright Act, claiming that the defendants created and sold dresses that infringed its visual art copyright registrations. Among the defendants was Fiesta Fashions, which allegedly infringed the size, design, and arrangement of sequins and bead patterns that appeared on the bust portion of a Jovani dress, as well as the wire-edged tulles added to the lower portion of the dress, a ruched-satin waistband, and the overall compilation, selection, coordination, and arrangement of all elements of the dress.
Fiesta sought to have the complaint dismissed, arguing that Jovani’s copyright registrations only accorded copyright protection to two-dimensional images of the dresses in the catalogs, and did not extend to the three-dimensional dress designs, and that Jovani’s allegedly infringed dress was not copyrightable.
District Court Decision
In July, the District Court granted Fiesta’s motion to dismiss, finding that, among other things, “the registration of a catalog as a single work is commonly used to register three-dimensional copyrightable items pictured in the catalog, rather than merely the two-dimensional pictures themselves,” and that the U.S. Copyright Office explicitly directs registrants to submit photographs when registering three-dimensional works, rather than that three-dimensional work itself. Additionally, the District Court determined that Jovani’s design failed to meet the tests for physical and conceptual separability, and held that none of the dress’ various elements reflected the designer’s artistic judgment exercised independently of functional influences.
Second Circuit Appeal
On appeal, the Second Circuit affirmed the dismissal of Jovani’s complaint, noting in an October 15, 2012 decision that “it is well settled that articles of clothing are ‘useful articles’ not protected by the Copyright Act.” While “Jovani maintains that the prom dress at issue merits copyright protection because its design constitutes a combination of features ‘that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article,’ specifically, the arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching at the dress waist; and layers of tulle on the skirt,” the panel of judges was not persuaded. “We have construed 17 U.S.C. s. 101 to afford protection to design elements of clothing only when those elements, individually or together, are separable – ‘physically or conceptually’ – from the garment itself,” the Second Circuit stated.
In terms of physical separability, the court held that “Jovani has not alleged, nor could it possibly allege, that the design elements for which it seeks protection could be removed from the dress in question and separately sold. Moreover, as the district court correctly observed, the removal of these items would certainly adversely affect the garment’s ability to function as a prom dress, a garment specifically meant to cover the body in an attractive way for a special occasion.”
As for conceptual separability, the court stated “no different conclusion obtains … which is evident when a designer exercises artistic judgment ‘independently of functional influences,’ rather than as ‘a merger of aesthetic and functional considerations.’” Here, “the aesthetic merged with the functional to cover the body in a particularly attractive way for that special occasion.”
The Bottom Line: Since “a jeweled bodice covers the upper torso at the same time that it draws attention to it; a ruched waist covers the wearer’s midsection while giving it definition; and a short tulle skirt conceals the wearer’s legs while giving glimpses of them. In sum, the aesthetic and the functional are inseparable in the prom dress at issue and, therefore, Jovani cannot state a plausible copyright claim.”
Petition for Certiorari
Petition for writ of certiorari to the United States Court of Appeals for the Second Circuit denied on March 18, 2013.