In determining the
copyrightability of prom dress designs, the Southern District of New York
recently noted that:
The exception for separable
elements of useful articles has proven difficult to apply, and courts
"have twisted themselves into knots trying to create a test to effectively
ascertain whether the artistic aspects of a useful article can be identified
separately from and exist independently of the article's utilitarian
Jovani Fashion, a
designer and manufacturer of women's dresses, discovered a number of dresses
that allegedly incorporated artwork that was substantially similar to and was
copied from Jovani's designs. Jovani filed an infringement suit against several
defendants, including Fiesta Fashion, which sold a sequined prom dress that was
an alleged copy of Jovani's style # 154416.
a) that style # 154416 included original artwork
incorporated in a dress including the ornamental design and arrangement on the
face of the fabric, including but not limited to the selection and arrangement
of sequins and beads and their respective patterns on the bust portion, as well
as the wire-edged tulles added to the lower portion of the depicted dress; and
b) that the artwork included the size of the sequins, a
ruched-satin waistband, and the remainder of the multi-layered tulle portion
containing the wire edging, as well as the compilation, selection,
coordination, and arrangement of all elements.
In Jovani Fashion, Ltd. v. Cinderella Divine,
Inc., 2011 U.S. Dist. LEXIS 73248 (S.D.N.Y. July 6, 2011) [enhanced version available to lexis.com subscribers], the court addressed the question of whether the
constituent design elements of prom dresses (and, in particular, the elements
of Jovani's style # 154416) could be copyrightable?
Dress designs are
useful articles for the purposes of the Copyright Act and thus are not typically
copyrightable. However, elements of a dress design can be protected if they are
physically or conceptually separable from the useful article. Comparing physical
separability, the court called conceptual separability "more abstract
and less readily understood" and noted that
no fewer than six tests had been suggested to explain it.
held that dress style # 154416 was not copyrightable because none of the
elements were physically or conceptually separable from the dress as a whole.
For the purposes of physical separability, the individual elements could be
physically removed from the dress without wholly destroying the dress's
functionality. However, Jovani had not suggested any way in which any of the
distinct elements could be reused and resold, and none was apparent. Instead,
each element was plainly usable only as a component of a dress, or, at best, a
similar item of clothing such as a skirt or blouse.
separability, the court held that none of the tests protected the dress' elements,
either individually or as a group. The court held that:
Jovani conceded that the individual elements of the dress (such as
pattern of sequins) were not copyrightable in isolation. There was no
discernible pattern of sequins and none was apparent. However, Jovani
argued that the
"selection, arrangement, and coordination" of elements was itself a part
of the original artwork incorporated in the dress. Thus, those
authorial choices were conceptually separate and copyrightable.
The court held that a useful
article's physically or
conceptually separable constituent elements were the only copyrightable elements. By
arguing that the individual elements were not copyrightable but only
their "selection, coordination, and arrangement," Jovani undercut any
argument that those elements were conceptually separable from the dress
For more information on this subject, read:
1-2 Nimmer on Copyright § 2.18 Works of Utility: Limitations on Copyrightability by Reason of
Utilitarian Function (Non-subscribers
can purchase Nimmer on Copyright at
the LexisNexis Bookstore).
The issue here raised
highlights a basic distinction between patent and copyright law. Whereas the
owner of a patent obtains "the right to exclude others from ... using ...
the invention," 1 the rights granted to a copyright owner under Section
106 of the Copyright Act do not include the right to prevent others from using
the copyrighted work. 2 Moreover, ordinarily a copyrighted work may be
"used" by the interested public without violating those rights that
are granted to a copyright owner.
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