By James Stewart

It is an exciting time for fashion law in the Second Circuit. On the heels of a landmark trademark decision holding that red soles could serve as a source identifier, the Second Circuit now approaches fashion law from a different perspective—copyright.

As mentioned in previous posts, fashion designers today rely primarily on trademark, patent, and anti-counterfeiting laws as the sources of protection for their designs. In some instances, designers invoke narrow copyright protection for their works.

Prom and pageant dress designer Jovani Fashion Ltd. (“Jovani”) brought a copyright infringement action against Fiesta Fashions (“Fiesta”) in the District Court for the Southern District of New York for allegedly copying decorative aspects of Jovani’s designs. Jovani’s claim of copyright protection is founded upon the idea that the design at issue combines features which serve both decorative and utilitarian purposes, but can be separated from the article and function independently. The District Court dismissed the action for failure to state a claim upon which relief could be granted.

On Monday, the Second Circuit dismissed Jovani’s appeal, affirming the lower court’s decision. The Second Circuit has traditionally only afforded protection to design elements of clothing when those elements are “physically or conceptually” separable from the article of clothing itself. Physical separability exists when the decorative element(s) for which protection is sought can actually be removed from the article of clothing without negatively affecting the overall function of the article. Conceptual separability exists when a designer uses his creative judgment independently of functional influences as opposed to merging aesthetic and functional considerations. In the final decision, to illustrate this point, the Court offered an example of a Halloween costume which creates in the viewer a concept distinct from that of the costume’s function merely as clothing and the elements for which protection is sought are not added to the costume to enhance its functionality as an article of clothing.

Jovani argued that its decorative sequins and crystals on the dress bodice, the horizontal satin ruching at the waist, and the layers of tulle on the skirt meet these thresholds. The Second Circuit, however, remained unconvinced. In applying physical separability, the Court recognized that the removal of any of these items would adversely impact the overall ability of the dress to function as such and therefore, could not pass this threshold. Regarding conceptual separability, the Court reasoned that while the sequins and crystals create the concept of a special occasion to the viewer, the overall impression is still that of clothing. Therefore, Jovani’s claim did not survive either of the Second Circuit tests.

Still, Jovani attempted to argue that a design element that makes an article of clothing more attractive cannot be an intrinsic element of the garment’s utilitarian function, which according to Jovani, is covering the body. The Second Circuit also rejected this argument noting the Circuit’s precedent on the function of clothing is decorative in nature while also serving the purpose of covering the body, which makes it especially difficult for decorative elements of clothing designs to pass the conceptual similarity test. Ultimately, Jovani was unsuccessful in convincing the Second Circuit of the copyrightability of his designs.

As we have noted, copyright protection for fashion design is a complex issue, given the industry’s propensity for rapid innovation and its inherent tendency to recycle and reinvent. While some designers desire protection, others fear that over protection could achieve an overly litigious environment and stifle creativity. While we love sequins, crystals, and satin, given this precedent, it may be best to proceed with caution in bringing copyright claims for these materials used on clothing in the Second Circuit.

Do you think the copyright protection afforded to articles of clothing is too limited? What are the potential consequences of providing designs with more robust protection in their designs?