On October 15, 2012, the United States Court of Appeals for the Second Circuit issued its opinion in Jovani Fashion, Ltd. v. Fiesta Fashions , Docket No. 12-598-cv, 2012 WL 4856412, holding that the prom dress artwork of fashion designer Jovani Fashions, Ltd. (“Jovani”) lacked copyrightable elements, and thus, could not be infringed by a competitor’s design. Though not a precedential decision, the opinion serves as both an important reminder of the absence of copyright protection afforded the fashion world and a streamlined instruction on the scope of and limits on copyrightable elements in works of fashion.
Appellant 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 Jovani claimed showed artwork incorporated in dresses. Later in 2010, Jovani filed suit against several competing manufacturers and retailers, claiming that those manufacturers and retailers created and sold dresses that infringed Jovani’s visual art copyright registrations. One of the parties sued was eventual appellee, Fiesta Fashions (“Fiesta”). Jovani asserted that Fiesta infringed Jovani’s size, design, and arrangement of sequins and bead patterns on the bust portion of Jovani’s dress, the wire-edged tulles added to the lower portion of the dress, a ruched-satin waistband, in addition to the overall compilation, selection, coordination, and arrangement of all elements of the dress.
Fiesta moved to dismiss the complaint, arguing that Jovani’s copyright registrations only accorded copyright protection to two-dimensional images of dresses in catalogs, rather than three-dimensional dress designs, and that Jovani’s allegedly infringed dress was not copyrightable. The District Court (Judge John G. Koeltl) swiftly disposed of the first argument, explaining that “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 noted further that the U.S. Copyright Office explicitly directs registrants to submit photographs when registering three-dimensional works, rather than that three-dimensional work itself. In analyzing Fiesta’s alleged infringement of Jovani’s dress, the District Court determined that Jovani’s design failed the established tests for physical and conceptual separability (explained at greater length below), and held that none of the dress’ various elements reflected the designer’s artistic judgment exercised independently of functional influences.
The District Court felt that given the item’s purpose as a prom dress, the design’s decorative or aesthetic qualities did not suffice to trump its utilitarian function of enhancing the wearer’s attractiveness. Additionally, the District Court noted that Jovani had conceded that the individual elements of the dress (such as the pattern of sequins) were not copyrightable in isolation, but Jovani instead argued that its choices, selection, arrangement, and coordination of the dress’ elements were in themselves copyrightable. Unpersuaded, the District Court stated that by admitting that the individual elements were not copyrightable, Jovani undercut any argument that those elements were conceptually separable from the dress. Finding that Jovani’s dress style could not be protected by a valid copyright, and, as a result, that there was nothing for Fiesta to infringe, the District Court granted Fiesta’s motion to dismiss.
On appeal, the Second Circuit (Judges Reena Raggi, Denny Chin, and Susan Carney) affirmed the dismissal of Jovani’s complaint, agreeing with the District Court that Jovani could not state a plausible copyright claim. The Second Circuit began its analysis by stating that it is well settled that articles of clothing are “useful articles” not protected by the Copyright Act (17 U.S.C. § 101, et seq.), despite Jovani’s contention that the design of the prom dress at issue was a combination of features (e.g., the arrangement of sequins and crystals, the satin ruching, the layers of tulle) that could be identified separately from and were capable of existing independently of the utilitarian aspects of the article. The Court explained that 17 U.S.C. § 101 has been construed to afford protection to design elements of clothing “only when those elements, individually or together, are separable -- physically or conceptually -- from the garment itself.” Noting physical separability could be shown where the decorative elements could actually be removed from the original item and sold separately without adversely impacting the item’s functionality, the Court explained that Jovani had not and could not allege that the design elements for which it sought protection could be removed from the dress and sold separately. In other words, removal of the sequins, or satin ruching, or layers of tulle would 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.”
Similarly, the Second Circuit held that Jovani had not demonstrated or could not demonstrate conceptual separability. An element of a clothing item is conceptually separable when it invokes in the viewer a concept separate from that of the item’s “clothing” function and if its addition to the item was not motivated by a desire to enhance the item’s functionality as clothing. As the Court explained, for conceptually separability to exist, it must be evident that the designer exercised artistic judgment independent of functional influences, instead of as a merger of aesthetic and functional considerations. The Court stated that Jovani’s use of sequins and crystals on the dress’ bust, ruched satin on the dress’ waist, and tulle layers on the skirt did not invoke an idea separate from the clothing; those elements were used to enhance the dress as an item of clothing and “the aesthetic merged with the functional to cover the body in a particularly attractive way for that special occasion.” In other words, the sequins, ruched satin, and tulle layers enhance the idea of the dress as a dress, rather than any one of those items serving a distinct and independent purpose.
The Court proceeded to note that clothing, in addition to covering the body, serves a “decorative function,” so that decorative elements of clothing are generally “intrinsic” to the overall function, rather than separable from it. Decorative choices in clothing often merge with how and how much to cover the body. Using the dress at issue as an example, the Court stated that “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 short tulle skirt conceals the wearer’s legs while giving glimpses of them.” Thus, the Second Circuit concluded that the aesthetic and the functional elements were inseparable in Jovani’s prom dress leaving Jovani without a viable copyright claim.
The Second Circuit’s decision, while not a groundbreaking decision in copyright law, certainly underscores the stark boundaries of intellectual property protection for fashion designs, and illustrates some designers’ frustration with the current federal copyright law as it pertains to fashion. But despite such frustrations, the current copyright statutory system attempts to deal with the complex and unique realities of the fashion world, one of constant invention and reinvention; one where past designs can be the new hot thing in a blink of an eye (or the turn of a season, at least). Some have argued that “genius” is often achieved only by standing on the shoulders of prior fashion giants and that a relative lack of copyright protection may serve as a more overall attractive motivation for fashion development than the potential alternative of designers sitting on protected yet underexploited designs. Others have called for a system which protects fashion designs and therefore encourages creation by protecting the results of a designer’s creative efforts in creating fashion designs.