Will the Supreme Court weigh in on copyright law's "conceptual separability" doctrine, as applied to fashion? [3/18 UPDATE: No.]

Posted by Charles Colman

LAW OF FASHION has been following Jovani Fashion, Ltd. v. Fiesta Fashions since the dispute was a mere district-court case going by a different name, Jovani Fashion, Ltd. v. Cinderella Divine, Inc. (which was discussed at some length in this writer's chapter in Navigating Fashion Law.)  How quickly our little case has grown up!  With the Second Circuit having affirmed Judge John Koeltl's decision granting a key motion to dismiss the Complaint on the basis of non-copyrightability, Jovani now seeks relief from the highest court in the land.


On January 10, 2013, Jovani's attorney, Mr. Anthony Handal of Handal & Morofsky, LLC, filed a petition for a writ of certiorari ("cert") with the U.S. Supreme Court.  (That filing is embedded below and also posted on Scribd, for ease of reading.)  Mr. Handal took a few minutes to chat with LAW OF FASHION, and explained why he is "very hopeful that the Supreme Court will grant the petition in this matter."


In Handal's view, the current state of separability jurisprudence in U.S. copyright law is the result of the law "building upon itself, often without reference to the [actual language of the copyright] statute and the Congressional Record associated with it."  As a result, he says, the doctrine "has drifted hopelessly far from the test delineated in Section 101 and [its] underlying public policy[.]"  One particularly egregious example of this drift, in Handal's view, is the principle, expressed in multiple circuit court decisions, that a useful article's "aesthetic expression must be separately salable in order to qualify for protection."  Handal says this standard is inconsistent with "other parts of the Copyright Act's legislative history, which make the point that aesthetic merit is not one of the requirements of the Copyright Act."


Handal notes that "the definition of a 'useful article' in Section 101 of the Copyright Act [is] 'an article having a function other than merely to portray appearance.'"  The Second Circuit's order in Jovani, according to Handal, essentially disregarded this standard when it (in Handal's words) "affirmed [the district court's] decision based upon the concept that a prom dress would not be a prom dress without its decorative aesthetic expression, and accordingly, [the dress's] aesthetic expression is not entitled to protection."  Handal hopes that the Supreme Court will correct what he sees as erroneous reasoning by the appellate court.

Mr. Handal's right-hand man on the Jovani case is Tim Bukher, also of Handal & Morofsky (and the blogger behind Law Techie.)  Bukher told LAW OF FASHION that he is often asked whether allowing copyright protection for [more] aesthetic elements of fashion, like the decorative components of the dresses at issue in Jovani, would result in monopolies over common design elements -- in contravention of constitutional policy and important distinctions between copyright and patent law. Bukher's answer to such objections: "We think that it is fully within the ambit of a court's power and judgment to articulate the 'strength' of any given copyright." In other words, a court might find a copyright on a relatively mundane artistic component of a fashion design valid, but thin. Greater use of "thin copyright," in Bukher's view, "would allow the designers to protect their articles from the type of virtually identical copying that we see in Jovani, but competing designers would still be free to make dresses that are somewhat similar but not identical." Bukher adds that he is "by no means opining with regard to the merits of this particular case on whether Jovani's protection should be so limited," but he "think[s] that this type of legal discretion has a foundation in our existing jurisprudence."

Fiesta Fashions, which prevailed before the Second Circuit, is naturally less enthused at the prospect of the Supreme Court granting cert in Jovani. Fiesta's attorney, Terrence Patrick Ross of Crowell & Moring LLP, filed a brief in opposition to Handal's cert petition one week ago, on February 14th.  (LAW OF FASHION reached out to Mr. Ross by e-mail, but has not heard back from him.)  Fiesta's opposition brief is embedded below, and also posted at Scribd.


[Note: LAW OF FASHION takes no position on the merits of either brief, or on the case more generally.]

[UPDATE 1 (3/8/13): According to the SCOTUS website, the case materials were distributed for review on February 27th, in advance of a conference on March 15th.]

[UPDATE 2 (3/18/13): The Supreme Court's website indicates that the Court has declined to grant certiorari in the case.]


Jovani Fashion v. Fiesta Fashions (1/10/13 Petition for a Writ Of Certiorari)



Jovani Fashion v. Fiesta Fashions (2/14/13 Opposition Brief)


[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman, his law firm, or its agents or clients. Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with it) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]