On October 15, 2012, the United States Court of Appeals for the Second Circuit issued a decision of great interest to the fashion industry in the case of Jovani Fashion, Ltd. v. Fiesta Fashions (Case No. 12-598-CV).  The Jovani decision provides a vivid illustration of the narrowly circumscribed protections that that the United States Copyright Act provides for fashion designs.

The plaintiff Jovani – which is a designer and manufacturer of women’s gowns – commenced this copyright infringement action in the United States District Court for the Southern District of New York against numerous dressmakers and retailers of competing gowns.  Jovani contended each of the defendants was marketing gowns which embodied design elements that were copied from, and infringed the copyrights in, Jovani’s own gown designs.  Jovani specifically claimed that one of the defendants, Fiesta Fashions, was marketing a prom gown which unlawfully copied Jovani’s design for a prom gown containing an “arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching at the dress waist; and layers of tulle on the skirt.”

Fiesta filed a motion with the trial court seeking dismissal of Jovani’s claims on the ground the Copyright Act does not protect the combination of design elements shared by the gowns designed by the two companies. The district court agreed with Fiesta, and granted its motion to dismiss.  Jovani then appealed  to the Second Circuit, which affirmed the district court’s decision.

The Second Circuit explained that, under “well settled” precedent, articles of clothing are considered “useful articles” which are not protected by the Copyright Act.  The Court further explained that, nonetheless, design elements which are embodied within an article of clothing may enjoy copyright protection if (and only if) those elements are (1) “physically severable” or (2) “conceptually severable” from the article itself.  The Second Circuit noted a design element is considered “physically severable” when that element “could be [physically] removed” from the article of clothing and then “separately sold.”  The Second Circuit provided the example of a belt buckle as a physically severable element.  The Court then noted a design element is considered “conceptually severable” when it does not contribute to the functionality of the clothing, but instead invokes a distinct “concept” in the mind of a viewer.  The Court provided the example of a Halloween costume as an illustration.

The Court proceeded to hold the design elements in common between the two dresses at issue were not physically severable because those elements could not “be removed from the dress in question and separately sold.”  The Court then held the similar design elements were not conceptually severable because they did “not invoke” a distinct concept in the mind of the viewer in the manner akin to a Halloween costume, but instead merely “enhance[d] the functionality of the dress as clothing for a special occasion.”  Because the similar elements between the two dresses were neither physically nor conceptually severable, the Second Circuit ruled that Jovani’s copyright infringement claim against Fiesta was properly dismissed.

Given the complexity of the copyright issue as it relates to apparel, advance planning is critical to success with designs.