Did Your Prom Have a Copyright Theme? Probably Not, but a Recent New York Copyright Case Has a Prom Theme

Did Your Prom Have a Copyright Theme? Probably Not, but a Recent New York Copyright Case Has a Prom Theme

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 function."

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.

Specifically, Jovani alleged:

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.

The court 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.

Regarding conceptual separability, the court held that none of the tests protected the dress' elements, either individually or as a group. The court held that:

  • Jovani did not claim that the elements of the dress "invoke in the viewer a concept separate from that of the [dress's] 'clothing' function;"
  • the various items did not "reflect[] the designer's artistic judgment exercised independently of functional influences." Instead, each of the individual elements was plainly fashioned to fit the specific needs of a prom dress;
  • the elements' ornamental aspects were not "primary" over the elements' "subsidiary utilitarian function." The primary role of each element was to contribute to an attractive prom dress, or at least to attempt to do so; and
  • none of the elements had any "likelihood of marketability." Removed from the dress, none of the elements had any independent marketable worth.

Jovani conceded that the individual elements of the dress (such as the 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 itself.

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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