Jovani Fashion, Ltd. v. Cinderella Divine, Inc.
808 F. Supp. 2d 542
| S.D.N.Y. | 2011Background
- Jovani filed a copyright infringement suit against Fiesta Fashions and Unique Vintage, alleging dresses incorporate Jovani artwork.
- Jovani registered copyrights for ten catalogs in 2010 claiming artwork incorporated in dresses.
- The First Amended Complaint targets Fiesta’s style #154416 and alleges Unique sells infringing dresses.
- Fiesta and Unique moved to dismiss under Rule 12(b)(1) and/or 12(b)(6), arguing only two-dimensional catalog images are protected and dresses are not copyrightable.
- The court analyzed subject matter jurisdiction and the merits, considering the dress as a whole and its separable elements.
- The court granted Fiesta’s motion to dismiss with prejudice, and denied Unique’s motion.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does registry of catalogs extend to three-dimensional dress designs? | Jovani argues catalogs cover the dress designs as overall copyrighted works. | Fiesta contends registrations only cover two-dimensional images in catalogs. | Registrations cover three-dimensional dress designs; two-dimensional images alone do not control subject matter. |
| Are dress design elements separable and copyrightable as useful articles? | Jovani asserts elements are independently copyrightable via separability. | Defendants contend dress elements are not separable from the dress’s utilitarian function. | Dress elements are not physically or conceptually separable; not copyrightable. |
| Is style #154416 protectable as a copyrightable design element of a dress? | Jovani asserts ornamental design, arrangement of sequins/beads, and other features are protectable. | Fiesta argues none of the elements are separately copyrightable and the overall dress is unprotectable. | Style #154416 is not protected; no copyrightable design elements are separable. |
| Does Unique fail to state a claim or lack subject matter jurisdiction on the same grounds? | Jovani maintains jurisdiction and claims as alleged are valid. | Unique argues lack of protectable subject matter and inadequate pleadings. | Unique's motion to dismiss denied; Fiesta's motion granted with prejudice. |
Key Cases Cited
- Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005) (separability of design elements from useful articles; tests for separability)
- Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980) (ornamental vs. functional aspects; separability test)
- Brandir Int’l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (design elements exercised independently of function; conceptual separability)
- Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996 (2d Cir. 1995) (arrangement of unprotectible elements; compilation concept not applicable to clothing here)
- Folio Impressions, Inc. v. Byer Calif., 937 F.2d 759 (2d Cir. 1991) (designs as useful articles; protection limited to separable elements)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (Supreme Court, 1991) (foundations of originality and compilation in copyright law)
- Satava v. Lowry, 323 F.3d 805 (9th Cir. 2003) (test for originality in compilations; applicability discussed)