Jovani Fashion, Ltd. v. Cinderella Divine, Inc. et al - Document 88
MEMORANDUM OPINION AND ORDER, that for that are set forth in this Opinion and Order, Unique's motion to dismiss is denied and Fiesta's motion to dismiss is granted. The Court previously gave Jovani the opportunity to amend its amended compl aint in response to the defendants' first motion to dismiss, and plainly stated that any dismissal would be with prejudice. (Doc. No. 62.) Accordingly, the dismissal of Jovani's claim against Fiesta is with prejudice. The Clerk is directed to close all pending motions. (Signed by Judge John G. Koeltl on 7/6/11) (pl)
United States District Court
Southern District of New York
JOVANI FASHION, LTD.,
- against -
10 Civ. 7085 (JGK)
MEMORANDUM OPINION AND
CINDERELLA DIVINE, INC., ET AL.,
JOHN G. KOELTL, District Judge:
This is a copyright infringement action brought by a
manufacturer of prom dresses, Jovani Fashion, Ltd. (the
"plaintiff" or "Jovani"), against several competing
manufacturers or retailers.
Two of the defendants, Fiesta
Fashions ("Fiesta") and Unique Vintage, Inc. ("Unique"), have
moved to dismiss the complaint pursuant to Federal Rules of
Civil Procedure 12(b)(1) and/or 12(b)(6) on the grounds that
Jovani only owns copyrights in two-dimensional pictures of the
dresses and that neither the dresses nor any aspect of them is
copyrightable under the Copyright Act, 17 U.S.C. § 101 et seq.
When presented with motions under both Federal Rule of
Civil Procedure 12(b)(1) to dismiss for lack of subject matter
jurisdiction and Rule 12(b)(6) to dismiss for failure to state a
claim upon which relief can be granted, the Court must first
analyze the Rule 12(b)(1) motion to determine whether the Court
has the subject matter jurisdiction necessary to consider the
merits of the action.
See Rhulen Agency, Inc. v. Ala. Ins.
Guar. Ass'n, 896 F.2d 674, 678 (2d Cir. 1990); see also S.E.C.
v. Rorech, 673 F. Supp. 2d 217, 220-21 (S.D.N.Y. 2009).
In defending a motion to dismiss for lack of subject matter
jurisdiction, the plaintiff bears the burden of proving the
Court's jurisdiction by a preponderance of the evidence.
Makarova v. United States, 201 F.3d 110, 113 (2d Cir. 2000).
considering such a motion, the Court generally must accept the
material factual allegations in the complaint as true.
ex rel. N.S. v. Attica Cent. Sch., 386 F.3d 107, 110 (2d Cir.
The Court does not, however, draw all reasonable
inferences in the plaintiff's favor.
Id.; see also Graubart v.
Jazz Images, Inc., No. 02 Civ. 4645, 2006 WL 1140724, at *2
(S.D.N.Y. Apr. 27, 2006).
Indeed, where jurisdictional facts
are disputed, the Court has the power and the obligation to
consider matters outside the pleadings, such as affidavits,
documents, and testimony, to determine whether jurisdiction
See Filetech S.A. v. France Telecom S.A., 157 F.3d 922,
932 (2d Cir. 1998); Kamen v. Am. Tel. & Tel. Co., 791 F.2d 1006,
1011 (2d Cir.1986).
In so doing, the Court is guided by that
body of decisional law that has developed under Federal Rule of
Civil Procedure 56.
Kamen, 791 F.2d at 1011; see also Rorech,
673 F. Supp. 2d at 221.
In deciding a motion to dismiss pursuant to Rule 12(b)(6),
the allegations in the complaint are accepted as true, and all
reasonable inferences must be drawn in the plaintiff's favor.
McCarthy v. Dun & Bradstreet Corp., 482 F.3d 184, 191 (2d Cir.
2007); Arista Records LLC v. Lime Group LLC, 532 F. Supp. 2d
556, 566 (S.D.N.Y. 2007).
The Court's function on a motion to
dismiss is “not to weigh the evidence that might be presented at
trial but merely to determine whether the complaint itself is
Goldman v. Belden, 754 F.2d 1059, 1067 (2d
The Court should not dismiss the complaint if the
plaintiff has stated “enough facts to state a claim to relief
that is plausible on its face.”
U.S. 544, 570 (2007).
Bell Atl. Corp. v. Twombly, 550
“A claim has facial plausibility when the
plaintiff pleads factual content that allows the court to draw
the reasonable inference that the defendant is liable for the
Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949
While the Court should construe the factual allegations
in the light most favorable to the plaintiff, “the tenet that a
court must accept as true all of the allegations contained in
the complaint is inapplicable to legal conclusions.”
also Rorech, 673 F. Supp. 2d at 221.
When presented with a motion to dismiss pursuant to Rule
12(b)(6), the Court may consider documents that are referenced
in the complaint, documents that the plaintiff relied on in
bringing suit and that are either in the plaintiff's possession
or that the plaintiff knew of when bringing suit, or matters of
which judicial notice may be taken.
See Chambers v. Time
Warner, Inc., 282 F.3d 147, 153 (2d Cir. 2002); see also Taylor
v. Vt. Dep't of Educ., 313 F.3d 768, 776 (2d Cir. 2002); Cortec
Indus., Inc. v. Sum Holding L.P., 949 F.2d 42, 47-48 (2d Cir.
1991); Kramer v. Time Warner, Inc., 937 F.2d 767, 773 (2d Cir.
1991); Rorech, 673 F. Supp. 2d at 221.
The following facts are undisputed, unless otherwise
Jovani is a designer and manufacturer of women's dresses,
particularly evening dresses, pageant gowns, prom dresses, and
(First Amended Compl. ("FAC") ¶ 22.)
May and August 2010, Jovani filed copyright registration
applications on and received copyright registrations for ten
catalogs that they claim show artwork incorporated in dresses.
(FAC ¶¶ 33-42.)
In 2010, Jovani discovered a number of dresses that it
claims incorporate artwork that is substantially similar to and
was copied from its designs.
(FAC ¶¶ 45-46.)
On September 15,
2010, it filed this lawsuit against eleven competing dressmakers
or retailers, along with John Doe defendants, in this Court.
those defendants, only Fiesta and Unique have moved to dismiss
the complaint; the others need not be discussed at this time.
The First Amended Complaint alleges that Fiesta
manufactures and sells infringing dresses, including one style
of dress that allegedly infringes Jovani style # 154416.
¶¶ 82, 319, 321-25.)
Jovani claims that style # 154416 is
protected by a visual arts copyright registration.
(FAC ¶ 319.)
According to Jovani, style # 154416 "includes original artwork
incorporated in a dress . . . includ[ing] the ornamental design
and arrangement on the face of the fabric of the depicted dress,
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."
(FAC ¶ 320.)
although not alleged in the First Amended Complaint, Jovani
asserts that the artwork includes 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
(Pl.'s Mem. at 7.)
Pictures of Jovani's style #
154416 and Fiesta's allegedly infringing dress are attached as
(FAC Ex. M.)
The First Amended Complaint also alleges that Unique sells
several styles of infringing dresses.
(FAC ¶¶ 63, 104, 109,
144, 147, 193, 196, 343, 346, 354, 355.) 1
After Fiesta filed an initial motion to dismiss, Jovani
amended its complaint and the Court denied Fiesta's motion as
In response, Fiesta and Unique each filed a motion to
Fiesta argues that Jovani's copyright registrations only
accord copyright protection to two-dimensional images of dresses
in catalogs, rather than any full, three-dimensional dress
design, and that, in any event, nothing about the allegedly
infringed dress is copyrightable.
Accordingly, Fiesta argues,
Jovani's complaint should be dismissed pursuant to Rule
Fiesta's motion specifically discusses the aspects of
dress style # 154416 that Jovani claims are copyrightable.
Unique raises the same arguments as Fiesta, with two
First, Unique frames its arguments as grounds for
When filing its opposition to the motions to dismiss, Jovani produced an
expert report and the deposit submitted to the Copyright Office with the
copyright registration application for dress style # 154416. The moving
defendants argue that these should not be considered. Because they do not
affect the resolution of these motions, it is unnecessary to decide whether
these documents can be considered.
dismissal under both Rule 12(b)(6) and Rule 12(b)(1).
Unique does not specifically discuss the copyrightability of the
allegedly infringed individual dresses or their constituent
The defendants' first argument, that Jovani's copyright
registrations protect only the photographic images of dresses in
their registered catalogs, is easily disposed of.
registration of a catalog as a single work is commonly used to
register three-dimensional copyrightable items pictured in the
catalog, rather than merely the two-dimensional pictures
See, e.g., Kay Berry v. Taylor Gifts, Inc., 421
F.3d 199, 204-06 (3d Cir. 2005); Yurman Studio, Inc. v.
Castaneda, 591 F. Supp. 2d 471, 483, 493-94 (S.D.N.Y. 2008); see
also 37 C.F.R. § 202.3(b)(4)(i)(A) (providing for registration
of all "copyrightable elements [of published works] that are
otherwise recognizable as self-contained works, that are
included in a single unit of publication, and in which the
copyright claimant is the same").
Indeed, the U.S. Copyright
Office explicitly directs registrants to submit "identifying
material, such as photographs" when registering threedimensional works of visual art, rather than "the three7
dimensional work" itself.
U.S. Copyright Office, Copyright
Registration for Works of the Visual Arts 4, Circular 40, Nov.
2010 (emphasis added).
Fiesta accurately points out that the
registrations themselves identify the work created as twodimensional artwork.
(FAC Ex. C.) However, an "administrative
classification . . . has no significance with respect to the
subject matter of the copyright or the exclusive rights
provided" by registration.
17 U.S.C. § 408(c)(1); see also
Yurman Studio, 591 F. Supp. 2d at 494.
The question of whether the constituent design elements of
prom dresses (and, in particular, the elements of Jovani's style
# 154416) can be copyrightable requires much more analysis.
Under the Copyright Act, "pictorial, graphic, and sculptural
works" are generally eligible for copyright protection, subject
to various requirements.
17 U.S.C. § 101; see also Chosun
Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 327 (2d
The Act defines such works to include "works of
artistic craftsmanship insofar as their form but not their
mechanical or utilitarian aspects are concerned"; however, it
protects "the design of a useful article," defined as "an
article having an intrinsic utilitarian function that is not
merely to portray the appearance of the article or to convey
information" or "[a]n article that is normally a part of a
useful article," "only if, and only to the extent that, such
design incorporates pictorial, graphic, or sculptural features
that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the
17 U.S.C. § 101; see generally Chosun, 413 F.3d at
It is well settled that dress designs are useful articles
for the purposes of the Copyright Act and thus "are not
Folio Impressions, Inc. v. Byer
Calif., 937 F.2d 759, 763 (2d Cir. 1991); see also Whimsicality,
Inc. v. Rubie's Costume Co., 891 F.2d 452, 455 (2d Cir. 1989); 1
Nimmer on Copyright, § 2.08(H)(3) (2011).
However, as with all
useful articles, elements of dress designs may be protected
where they are "physically or conceptually" separable from the
See 17 U.S.C. § 101; Chosun, 413 F.3d at 328-
29; Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d
989, 993 (2d Cir. 1980).
Only "design elements that can be
conceptualized as existing independently of their utilitarian
function are eligible for copyright protection."
F.3d at 329 (internal quotation marks and citation omitted).
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
Carol Barnhart Inc. v. Econ. Cover Corp., 773 F.2d
411, 418 (2d Cir. 1985).
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."
Masquerade Novelty, Inc. v.
Unique Indus., Inc., 912 F.2d 663, 670 (3d Cir. 1990); see
generally 1 Nimmer on Copyright 2.08(B)(3).
Of the two forms of
separability, physical separability is somewhat easier to
analyze: a component of a useful article is physically separable
and therefore copyrightable if it "can actually be removed from
the original item and separately sold, without adversely
impacting the article's functionality."
Chosun, 413 F.3d at
Conceptual separability, however, is more abstract and less
readily understood; no fewer than six tests have been suggested
to explain it.
See Galiano v. Harrah's Operating Co., 416 F.3d
411, 417 & n.13 (5th Cir. 2005).
In a case involving Halloween
costumes, for example, the Court of Appeals for the Second
Circuit held that design elements might be conceptually
separable if the plaintiff could show that they "invoke in the
viewer a concept separate from that of the costume's 'clothing'
function, and that their addition to the costume was not
motivated by a desire to enhance the costume's functionality qua
Chosun, 413 F.3d at 330.
The Court of Appeals has
also held design elements to be conceptually separable when they
"can be identified as reflecting the designer's artistic
judgment exercised independently of functional influences" and
do not "reflect a merger of aesthetic and functional
Id. at 329 (quoting Brandir Int'l, Inc. v.
Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987)).
At times, it has asked whether an element's "ornamental aspect"
was "primary" over a "subsidiary utilitarian function."
Kieselstein-Cord, 632 F.2d at 993.
The Court of Appeals for the
Seventh Circuit has largely followed the "judgment exercised
independently of functional influences" formula.
Point Int'l, Inc. v. Charlene Prods., Inc., 372 F.3d 913, 931
(7th Cir. 2004) (quoting Brandir, 834 F.2d at 1145).
of Appeals for the Fifth Circuit, by contrast, considered and
rejected that approach in favor of a "likelihood of
marketability" test, holding that "conceptual separability
exists where there is substantial likelihood that even if the
article had no utilitarian use it would still be marketable to
some significant segment of the community simply because of its
aesthetic qualities," Galiano, 416 F.3d at 419 (quoting 1 Nimmer
on Copyright § 2.08(B)(3)) — even as it acknowledged that that
test "might be a sub-optimal prophylactic rule," id. at 421.
See also Poe v. Missing Persons, 745 F.2d 1238, 1243 (9th Cir.
1984) ("[T]he district court may also consider the admissibility
of evidence as to [an article at issue's] marketability as a
work of art.").
None of the Second Circuit cases has purported to establish
an exclusive test for determining conceptual separability.
Indeed, the most recent entry in the field, Chosun, appears to
endorse both the "separate concept" test and the "judgment
exercised independently of functional influences" test.
Chosun, 413 F.3d at 329.
It is therefore unclear what test
should be applied in a case such as this, involving design
elements on dresses.
Under any of the tests, however, the
outcome of this case is the same, and therefore there is no need
to consider extensively the differences among the various tests.
Unique argues broadly that Jovani "cannot obtain copyright
protection on any of the clothing depicted in the sales catalogs
because . . . items of clothing are 'useful articles' which are
(Unique Mem. at 7.)
overstates the general rules outlined above.
Useful articles, as already explained, are largely
unprotected by the Copyright Act, except to the extent that they
"incorporate pictorial, graphic, or sculptural features that
can be identified separately from, and are capable of existing
independently of, the utilitarian aspects of the article."
U.S.C. § 101.
While the meaning of this caveat may be unclear,
it cannot be disputed that it provides protection to some design
components of useful articles — which includes clothing.
Chosun, 413 F.3d at 328 ("[S]eparable elements in clothing, to
the extent that they exist, may be eligible for copyright
The Court cannot bypass this inquiry merely
because clothing designs are rarely protectable.
the Copyright Office Policy Decision on which Unique relies
states only that 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 animalshaped items that can be worn."
United States Copyright Office
Policy Decision: Registrability of Costume Designs, 56 Fed. Reg.
56530, 56531 (1991) (emphasis added) (footnote omitted).
Unique has not made any argument that the particular
dresses or design elements that it is alleged to have infringed
Absent such an argument, Unique's motion
must be denied.
Fiesta's motion is substantially more specific.
argues that the single dress design it is alleged to have
infringed, style # 154416, lacks any copyrightable elements.
Unlike Unique's motion, Fiesta's motion allows the Court to
assess the separability of the allegedly protected elements in
the dress at issue.
As a preliminary matter, the parties dispute what design
elements are actually alleged in the First Amended Complaint.
Fiesta would limit the Court's consideration to the elements
particularly mentioned in the First Amended Complaint: "the
selection and arrangement of sequins and beads and their
respective patterns of the bust portion, as well as the wireedged tulles added to the lower portion of the depicted dress."
(FAC ¶ 320.)
Jovani construes the First Amended Complaint to
allege other allegedly protectable design elements, including
the size of the sequins, a ruched-satin waistband across the
midriff of the dress, and the multi-layered tulle portion that
covers the wearer's upper legs, along with "the compilation,
selection, coordination, and arrangement" of all these
(Pl.'s Mem. at 7.)
Although Jovani did not explicitly identify every design
element it now claims is protected in the First Amended
Complaint, it did include a picture of the dress as an exhibit
attached to the complaint.
This allows the Court to consider
design elements visible in the picture, because "[i]n addition
to the factual allegations pled in the complaint, the Court
should also consider documents attached to the complaint as
exhibits or incorporated into the complaint by reference."
Gregori v. 90 William St. Dev't Grp. LLC, No. 09 Civ. 4753, 2010
WL 3001979, at *3 (S.D.N.Y. July 20, 2010); cf. Peter F. Gaito
Architecture, LLC v. Simone Dev't Corp., 602 F.3d 57, 64 (2d
Cir. 2010) ("[W]here, as here, the works in question are
attached to a plaintiff's complaint, it is entirely appropriate
for the district court to consider the similarity between those
works in connection with a motion to dismiss, because the court
has before it all that is necessary in order to make such an
Accordingly, the Court will consider all of the
elements of the dress that Jovani claims are protectable.
Based on the picture provided by Jovani, it is clear that
none of the elements of dress style # 154416 are physically or
conceptually separable from the dress as a whole.
purposes of physical separability, the Court acknowledges that
the individual elements can be physically removed from the dress
without wholly destroying the dress's functionality.
physical separability requires that a design element "can
actually be removed from the original item and separately sold,
without adversely impacting the article's functionality."
Chosun, 413 F.3d at 329 (emphasis added).
It is not enough that
an element can be ripped off the larger useful article; it must
have some value in its freestanding form (above, of course, the
value of its constituent material).
Jovani does not suggest any
way in which any of the distinct elements it identifies could be
reused and resold, and none is apparent.
Instead, each element
is plainly usable only as a component of a dress, or, at best, a
similar item of clothing such as a skirt or blouse.
Nor do any of the various tests for conceptual separability
protect the elements of the dress, either individually or as a
First, Jovani does not claim that the elements of the
dress "invoke in the viewer a concept separate from that of the
[dress's] 'clothing' function."
Chosun, 413 F.3d at 330.
Although perhaps some vague association with the aquatic might
be found in the dress's aquamarine motif, a bar set so low would
allow the copyrighting of such a vast array of clothing that the
general inapplicability of the Copyright Act to clothing would
be a nullity.
Second, the various items do not "reflect the designer's
artistic judgment exercised independently of functional
Brandir, 834 F.2d at 1145.
Instead, each of the
individual elements is plainly fashioned to fit the specific
needs of a prom dress.
The cloth swatch containing the sequins
and beads is formed to compose the bust portion of the dress;
the ruched-satin fabric is shaped into a waistband; and the
layers of tulle make up the dress's skirt.
choices could have been made in each area, it is clear that the
artistic judgment was exercised with an eye toward the basic
requirements of a dress and thus was not exercised independently
of functional influences.
Here again, the plaintiff’s argument
would render virtually all clothing copyrightable.
Third, the elements' ornamental aspects are not "primary"
over the elements' "subsidiary utilitarian function."
Kieselstein-Cord, 632 F.2d at 993.
The primary role of each
element is to contribute to an attractive prom dress, or at
least to attempt to do so.
Jovani argues as if a prom dress's
sole function were to cover the body, with any aesthetic appeal
being merely incidental.
This is, to say the least, a curious
position for a designer of prom dresses to take.
appeal is a core purpose of a prom dress.
Given the purpose of
a prom dress, a design element's decorative or aesthetic
qualities will generally not suffice to trump its utilitarian
function of enhancing the wearer's attractiveness.
Whimsicality, 891 F.2d at 455 ("[C]lothes are particularly
unlikely to meet [the separability] test — the very decorative
elements that stand out being intrinsic to the decorative
function of the clothing.”); cf. 1 Nimmer on Copyright
2.08(B)(3) ("Applying this reasoning, no attractively shaped
useful article could be said to have utility as its 'sole
intrinsic function,' because all have the additional function of
The Regulation would thus cease to
constitute a meaningful barrier to copyright.").
Fourth, none of the elements has any "likelihood of
Galiano, 416 F.3d at 421.
As discussed above,
removed from the dress, none of the elements has any independent
This is not a case where a designer has
created an original artwork that could be translated into
another medium or marketed as a freestanding artwork, such as a
particular human or animal face, see, e.g., Pivot Point, 372
F.3d at 931, or a sculpture that happens to take the form of a
belt buckle, see Kieselstein-Cord, 632 F.2d at 993.
not used on a women's dress or a very similar item of clothing,
the elements have no apparent marketable use.
Indeed, at argument, Jovani conceded that the individual
elements of the dress (such as the pattern of sequins) were not
copyrightable in isolation.
Jovani acknowledged that there is
no discernible pattern of sequins and none is apparent from the
photo of the dress.
Rather, Jovani argued that the "selection,
arrangement, and coordination" of elements is itself a part of
the original artwork incorporated in the dress, and that those
authorial choices are conceptually separate and copyrightable.
By making this proposition, Jovani effectively undercuts its
claim of copyrightability.
It is only the constituent elements
of the useful article that are physically or conceptually
separable from that article that are copyrightable.
that the individual elements are not copyrightable, but only
their “selection, coordination, and arrangement,” Jovani
undercuts any argument that those elements are conceptually
separable from the dress itself.
Jovani primarily relies on Knitwaves, Inc. v. Lollytogs
Ltd., 71 F.3d 996 (2d Cir. 1995), a case involving children's
sweaters featuring fall-themed fabric appliqués designed to
resemble leaves, squirrels, and acorns.
In Knitwaves, the Court
of Appeals held that "a work may be copyrightable even though it
is entirely a compilation of unprotectible elements" based on
the "original way in which the author has 'selected,
coordinated, and arranged' the elements of his or her work."
Id. at 1004 (quoting Feist Publ'ns., inc. v. Rural Tel. Serv.
Co., 499 U.S. 340, 358 (1991)).
Jovani overlooks two key differences between Knitwaves and
First, Knitwaves did not address the issue of
Knitwaves considered whether there was
infringement of the original works because of the substantial
similarity of the infringing works.
It did not consider the
copyrightability of the original works because the defendant did
not dispute the validity of the plaintiff's copyrights.
The Knitwaves court looked at the arrangement of the
individual components of the sweaters at issue — the placement
and method of application of leaves and other artwork, for
example — only to determine whether the defendant's sweaters
were substantially similar to the plaintiff's copyrighted
Second, Knitwaves concerned fabric designs.
F.3d at 1002.
Fabric designs, unlike clothing designs, "are
considered 'writings' for purposes of copyright law and are
Id. at 1002; see also Folio
Impressions, 937 F.2d at 763.
Jovani has conceded that it is
not claiming a copyright in the fabric designs of its dress;
rather, it is claiming a copyright in the way it has manipulated
various elements that it uses with the fabric.
unlike this case, concerned the pattern of an object — a fabric
design — that generally could be copyrightable in isolation.
This is not the case with Jovani’s dresses. 2
Jovani also cites Eve of Milady v. Moonlight Design, Inc., No. 98 Civ. 1549,
1998 U.S. Dist. LEXIS 21288 (S.D.N.Y. Aug. 11, 1998), in which bridal dresses
and accompanying lace designs were held copyrightable. Like Knitwaves, Eve
of Milady concerned fabric designs that were themselves copyrightable, and is
therefore distinguishable from this case. See id. at *2-3; see also Eve of
Milady v. Impression Bridal, Inc., 957 F. Supp. 484, 489 (S.D.N.Y. 1997)
(“Because lace designs are a form of fabric designs, I find that plaintiffs'
lace designs are copyrightable.”). Moreover, the brief discussion of
copyrightability in Eve of Milady does not discuss the separability of any
copyrightable elements, and all discussions of individual dress components
such as sleeves and skirting is in the context of substantial similarity,
rather than copyrightability. See Eve of Milady, 1998 U.S. Dist. LEXIS
21288, at *13-29.
Similarly, the Supreme Court case from which Knitwaves drew
the "selected, coordinated, and arranged" language is also
It concerned compilations, which are specifically
protected by the Copyright Act to the extent of the author's
See 17 U.S.C. § 103(b); Feist Publ'ns, 499 U.S.
Useful articles, by contrast, are explicitly
excluded from protection, except to the extent that their
features are separable from their utilitarian aspects.
It is not readily obvious why the basic characteristics of
compilations — their selection, coordination, and arrangement —
whould suffice to render useful articles copyrightable. 3
Accordingly, it cannot be reasonably found that Jovani's
dress style # 154416 is protected by a valid copyright.
this is the only dress style that Fiesta is alleged to have
infringed, Fiesta's motion to dismiss is granted.
Jovani also relies on Express, LLC v. Fetish Group, Inc., 424 F. Supp. 2d
1211 (C.D. Cal. 2006). Express found that an arrangement of unprotected lace
trim on a tunic could be copyrightable, but found that only a particular
embroidery design was, in fact, copyrightable in that instance. Id. at 122122, 1224-25, 1227. Moreover, Express and the Ninth Circuit case on which it
relies make clear that the bar for copyrightability due solely to selection
and arrangement is quite high: “a combination of unprotectable elements is
eligible for copyright protection only if those elements are numerous enough
and their selection and arrangement original enough that their combination
constitutes an original work of authorship.” Id. at 1225 (quoting Satava v.
Lowry, 323 F.3d 805, 811 (9th Cir. 2003)). Neither Satava nor Express has
ever been cited by a court within the Second Circuit, and, if they were
applied here, their strict test would not be satisfied by the few items
constituting the arrangement on style # 154416.
For the foregoing reasons, Unique's motion to dismiss is
denied and Fiesta's motion to dismiss is granted.
previously gave Jovani the opportunity to amend its amended
complaint in response to the defendants' first motion to
dismiss, and plainly stated that any dismissal would be with
(Doc. No. 62.)
Accordingly, the dismissal of
Jovani's claim against Fiesta is with prejudice.
Dhabi Commercial Bank v.
See, e.g., Abu
& Co., No. 08 Civ. 7508,
2009 WL 3346674, at *2 (S.D.N.Y. Oct. IS, 2009)
(" [A] dismissal
with prejudice is generally appropriate where a court puts a
plaintiff on notice of a complaint's deficiencies and the
plaintiff fails to correct those deficiencies after
id. at *2 n.14 (collecting cases).
The Clerk is directed to close all pending motions.
New York, New York
July G ' 2011