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Aug 03 2011

Prom Dress Case Shows Difficulty in Protecting Dress Designs

Yesterday the NY Law Journal reported that Southern District of NY Judge John Koeltl dismissed a case brought by prom dress designer/manufacturer Jovani Fashion against 11 other dress designers and retailers for alleged copyright infringement. Jovani had registered several of its dress designs with the US Copyright Office in 2010. It then filed this lawsuit claiming that the defendant designers copied Jovani’s dress designs. Jovani’s dresses, some of which have been worn by celebrities like Taylor Swift and Kim Kardashian are significantly more expensive than Fiesta’s which are sold on sites like discountdressup.com. From looking at the photos attached as exhibits to the complaint:

it is clear that the dresses are nearly identical and were likely copied or “inspired” by the defendants. But that does not mean, the court said, that they infringed on Jovani’s copyright. Under copyright law, “functional items” that is things that can be used in daily living are not copyrightable. Copyright is reserved for artistic expression and a dress’ design element must be able to stand on its own as artistic expression in order to be able to be protected by copyright. Here is Judge Koeltl’s description of the law in this area:
It is well settled that dress designs are useful articles for the purposes of the Copyright Act and thus “are not typically copyrightable.However, as with all useful articles, elements of dress designs may be protected where they are “physically or conceptually” separable from the useful article. Only design elements that can be conceptualized as existing independently of their utilitarian function are eligible for copyright protection. It is not enough that a useful article or one of its elements fall within a traditional art form” or be “aesthetically satisfying and valuable; aesthetic or artistic features alone do not make a design element physically or conceptually separable.(citations omitted)

Here Jovani sought to protect lace patterns and skirt hem designs that were an integral part of the dress and not a separate stand alone design element, so they were knocked out of court. But the reason why the case is important is because it makes clear that just because the Copyright Office accepts your copyright application and awards you a copyright based on the application, does not mean that it is enforceable. The Copyright Office just takes your fee, examines your application, and if it looks in order, it accepts it. Just because your design is original, creative and unique, is not enough either. The Copyright Office does issue guidelines in this area and on the issue of dress design the office has issued a Policy Decision which states:

The Copyright Office has “generally refused to register claims to copyright in three-dimensional aspects of clothing” and that the Office had “registered a few narrowly drawn claims in certain three-dimensional fanciful or animal-shaped items that can be worn (Anyone remember music artist Bjork’s swan dress?)

The other interesting thing about the case is what it says about lawyering. First of all, one wonders when Jovani hired its attorneys to copyright its designs whether Jovani was told of the weakness of their claim and of the Policy Decision from the Copyright Office? What were they told when they filed this lawsuit which was doomed from the start? The court had earlier told Jovani that it might want to amend its complaint to try and set out a more cognizable claim and it gave it ample time to do so. Jovani decided not to amend, so the court dismissed the case WITH PREJUDICE meaning Jovani can no longer sue the designer whose case got dismissed. Interestingly, not all defendants got a dismissal. Only two manufacturers even made a summary judgment motion; Fiesta Fashions and Unique Vintage. Fiesta put forth the argument that the designs were not capable of being stand alone artistic expressions and delineated the difference between the rarely protectable dress designs and the plaintiff’s generic dress design elements. They won. Unique merely argued that in general dress designs are not copyrightable because they are useful articles. But the court correctly held that this argument is not enough, because even as the Policy Decision itself states – The Copyright Office generally refuses to register claims of copyright to dress designs.. That means it sometimes does register such claims. Here, in fact , it did register the claim. So the court said Unique had to go further. The court said that because Unique did not go further and just relied on this basic argument, that the court would deny its motion for summary judgment and keep Unique in the case. I suspect explaining this decision to Unique was not something their lawyers at Ellenoff Grossman & Schole were happy about. The court did not state whether it would consider a new motion from unique based upon Fiesta’s argument. After all, if the design elements are not protected by copyright, then Jovani really has no claim against any of the defendants. Its unusual that the court did not dismiss the entire case, but that it didn’t shows how lawyering can effect an outcome of a case.

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