No.

________ IN THE

Supreme Court of the United States

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JOVANI FASHION, LIMITED, v. FIESTA FASHIONS, ET AL.,

Petitioner,

Respondents.

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On Petition for a Writ Of Certiorari to the United States Court of Appeals for the Second Circuit
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PETITION FOR WRIT OF CERTIORARI

-----------------------------------------------------------------ANTHONY H. HANDAL Counsel of Record TIM BUKHER, DAVID DUSHANE HANDAL & MOROFSKY, LLC 501 Kings Highway East Suite 108 Fairfield, CT 06825 (917) 880 - 0811 (handal@handalglobal.com) JOSEPH SOFER ROBERT M. HAROUN SOFER & HAROUN, LLP 317 Madison Avenue, Suite 910 New York, NY 10017

QUESTIONS PRESENTED 1. Which of the competing tests delineated by the Circuits for assessing, in a useful article, the separability of aesthetic expression and the utilitarian aspects of the useful article, should be applied to determine whether the aesthetic expression is separable and thus protectable under the copyright law? 2. Whether, under the Copyright Act of 1976, the Second Circuit is correct in affirming the holding of the District Court, that the decorative function of projecting an attractive appearance performed by attached decorative elements (as compared to the utilitarian function of covering and protecting the body) is an inseparable utilitarian aspect of clothing, rendering the artistic expression associated with such decorative function ineligible for copyright protection.

ii RULE 14.1(B) AND 29.6 STATEMENTS Pursuant to Supreme Court Rule 14.1(b), Petitioner Jovani Fashion, Limited (Jovani or "Petitioner") was plaintiff in the district court proceedings and plaintiff-appellant in the court of appeals proceedings. Respondent Fiesta Fashions was defendant in the district court proceedings and defendant-appellee in the court of appeals proceedings. Respondents Cindy Collection, Cinderella Divine, Incorporated, Colors Fashion, Incorporated, Aspeed Design Corporation, Unique Vintage, Incorporated, Discountdressup.com, JM Dreamline, Incorporated, The Rose Dress, Incorporated, Rory Ballard, John Doe 1 through 100, and Julie's Collection were defendants in the district court proceedings and in the court of appeals proceedings. Pursuant to Supreme Court Rule 29.6, Petitioner states that no publicly traded company owns 10 percent or more of Jovani Fashion, Limited.

iii TABLE OF CONTENTS QUESTIONS PRESENTED ....................................... i RULE 14.1(B) AND 29.6 STATEMENTS ................. ii OPINIONS BELOW ....................................................1 JURISDICTION ..........................................................1 STATUTORY PROVISIONS INVOLVED .................1 STATEMENT OF THE CASE ....................................2 A. The District Court Proceedings ..........................5 B. Proceedings in the Second Circuit ......................8 REASONS FOR GRANTING THE PETITION .........9 A. Neither Predictability nor Even a Uniform Rule for the Application of the Separability Requirement of the Copyright Act of 1976 Presently Characterizes American Copyright Jurisprudence...........................................................9 B. Congressional Intent, Historical Background and the Rationale of the Separability Doctrine Compel a Rule Consistent with the Law of Only Some of the Circuits ............................................... 12 C. The Ordinary Meaning of the Provisions of 17 U.S.C. 101, Viewed in Historical Context, Provide a Simple Separability Test .................................... 15

iv D. Application of the Methodology of the Act Would Have Resulted in an Outcome Consistent with Mazer.............................................................. 18 E. The Current Split between the Circuits: Merely Portraying Appearance Is Not a Utilitarian Aspect .................................................................................20 F. The Competing Tests for Separability ............ 22 G. A Test That Involves Aesthetic Merit Conflates the Different Requirements of Separability and Level of Originality ................................................ 26 CONCLUSION .......................................................... 28 APPENDIX A (Court of Appeals Opinion) ............... 1a APPENDIX B (District Court Opinion) .................... 7a APPENDIX C (House Report No. 94-1476) ............ 28a APPENDIX D (Exhibit M to Complaint)................ 35a

v TABLE OF AUTHORITIES Cases Baker v. Selden, 101 U.S. 99 (1879)...................... 4, 13 Bonazoli v. RSVP Intern., Inc., 353 F. Supp. 2d 218 (D.R.I. 2005) ........................................................... 27 Brandir Internat'l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir.1987) ............... 10, 25, 27 Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985) ........................................... 10 Chosun International, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005)... 21, 22, 24, 25, 28 Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C.Cir. 1978)4 Feist Publ'ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991) ............................................................... 27 Galiano v. Harrah's Operating Co., Inc., 416 F.3d 411 (5th Cir. 2005) ............................... 11, 23, 28, 29 Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980) .......................................... 24 Kitchens of Sara Lee, Inc. v. Nifty Foods Corporation, 266 F. 2d 541 (2d Cir. 1959) .................................. 27 Lego A/S v. Best-Lock Construction Toys, Inc., 874 F. Supp. 2d 75 (D. Conn. 2012) ............................ 10, 11 Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663 (3d Cir. 1990) .............................. 10, 21, 28 Mazer v. Stein, 347 U.S. 201 (1954) 3, 6, 13, 14, 15, 18 Pivot Point Int'l, Inc. v. Charlene Products, Inc., 372 F.3d 913 (7th Cir. 2004) ....................... 20, 22, 23, 26

vi Universal Furniture v. Collezione Europa USA, 618 F. 3d 417 (4th Cir. 2010) .................................. 17, 20 Washingtonian Co. v. Pearson, 306 U. S. 30, 36 (1939) ...................................................................... 14 Statutes 17 U.S.C. 101 .................................................. passim Copyright Act of 1976........................................ passim Copyright Act of 1790................................................ 13 Fed. R. Civ. P. 12(b)(6) ............................................ 1, 6 Statute of Anne, 8 Anne, Ch. 19 (1710)..13 Statute of Monopolies, 21 Jac. 1 c. 3 (1623)...12 Other Authorities H.R. REP. NO. 94-1476 ....................................... 3, 5, 26

1 Jovani Fashion, Limited ("Jovani" or "Petitioner") respectfully petitions for a writ of certiorari to review the judgment of the United States Court of Appeals for the Second Circuit.
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OPINIONS BELOW The opinion of the court of appeals (App., infra, 1a-6a) is not reported (but is available at 2012 U.S. App. LEXIS 21245). The opinion of the district court (App., infra, 7a-27a) is reported at 808 F. Supp. 2d 542.
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JURISDICTION The judgment of the court of appeals was entered on October 15, 2012. The jurisdiction of this Court is invoked under 28 U.S.C. 1254(1).
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STATUTORY PROVISIONS INVOLVED Federal Rule of Civil Procedure 12(b)(6) provides that a party may assert a defense a plaintiff's, "failure to state a claim upon which relief can be granted." The Copyright Act of 1976 at 17 U.S.C. 101 provides in relevant part that "the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be

2 identified separately from, and are capable of existing independently of, the utilitarian aspects of the article."
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STATEMENT OF THE CASE This case arises out of the infringement of the Petitioner Jovani's copyright in a work of authorship consisting of a decorated prom dress. The prom dress comprises an unadorned foundation garment or smock supporting and covered by a sculptural artistic composition of three-dimensional decorative members: 1) a glittering array of decorative sequins and jewels (attached to the bodice of the smock), 2) horizontal gatherings of satiny fabric ruches (secured around the midriff of the smock), and 3) diaphanous vertically folded multilayered tulles which are tinted on the bottom and define a wavy lower edge (overlying the lower skirt portion of the smock), collectively referred to herein as the Aesthetic Features at Issue. The Aesthetic Features at Issue, together with the smock, form the overall prom dress design (the Design) of Petitioner, and is illustrated in Exhibit M to Petitioners first amended complaint. App. 35a. The Design is covered by a visual arts copyright registration issued to the Petitioner by the Copyright Office of the Library of Congress, under U.S. Copyright Registration No. VA 1-714-131. Under 101 of the Copyright Act of 1976 (the Act), the design of a "useful article," such as a prom dress, is protected "only to the extent that, such design incorporates pictorial, graphic, or sculptural

3 features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." 17 U.S.C. 101 (emphasis added). In the words of the House Report on the Revision on the Copyright Law Revision, explaining the intent of the above statutory separability formula, [u]nless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. H.R. REP. NO. 941476, at 55 (1976) (emphasis added). App. 33a. The statutory separability formula is a codification of this Courts decision in Mazer v. Stein, 347 U.S. 201 (1954). See id. App. 32a. The courts have interpreted the statute to mean that the separability requirement may be fulfilled by a finding of either physical separability or conceptual separability. While the statutory term "utilitarian" is not defined directly in the Act, Congressional intent to define utilitarian aspects as excluding the mere portrayal of appearance is clear from the Act's definition of a "useful article. The Act defines a useful article as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." 17 U.S.C. 101 (emphasis added). In other words, the Act sought to protect artistic expression, while not impacting competition in utilitarian articles devoid of artistic expression. Consistent with this,

4 the quoted language expressly makes the limitations on the copyrightability of useful articles inapplicable to articles without any utilitarian function. The longstanding policy concern underlying limiting copyright protection to non-utilitarian aspects of a useful article is that, without this limitation, [i]f one manufacturer were given the copyright to the design of... [a useful] article, it could completely prevent others from producing the same article. Esquire, Inc. v. Ringer, 591 F.2d 796, 801 n. 15 (D.C.Cir. 1978). Grants of exclusive rights in utilitarian articles, is properly in the purview of the patent law with its relatively short period of protection, and strict requirements of novelty and non-obviousness, as compared to the copyright laws spare originality requirement.1 Conversely, the copyright law seeks to protect original aesthetic expression, including separable artistic expression incorporated in useful articles.

See also Baker v. Selden, 101 U.S. 99, 102 (1879): To give to the author of the book an exclusive property in the art described therein, when no examination of its novelty has ever been officially made, would be a surprise and a fraud upon the public. That is the province of letters-patent, not of copyright. The claim to an invention or discovery of an art or manufacture must be subjected to the examination of the Patent Office before an exclusive right therein can be obtained; and it can only be secured by a patent from the government.
1

5 Petitioner initiated this lawsuit on September 15, 2010, to address infringement of its copyright in the Design on account of certain prom dresses being sold by Respondent Fiesta Fashions ("Fiesta" or "Respondent"). The infringing prom dress is illustrated in Exhibit M to Petitioners first amended complaint. App. 36a. In defense, Fiesta took the position, inter alia, that the Aesthetic Features at Issue were not protectable under the Act, because they could not exist independently of the garments utilitarian aspects, arguing that the purpose of portraying an attractive appearance is within the purview of the statutory term utilitarian aspects." A. The District Court Proceedings The Petitioner has taken issue with Respondent on the scope of the statutory term utilitarian aspects, and has noted both that the mere projection of appearance is explicitly recognized in the Act as not being a utilitarian aspect, and that the utilitarian aspect of a prom dress which provides the function of covering and protecting the body is unaffected by the removal of the attached decorative sculptural Aesthetic Features at Issue. Indeed, any dress can be said to present an attractive appearance, and following the Respondents view of the law, it would thus be the case that no dress could ever have a copyrightprotected component. This would fly in the face of the explicit recognition in H.R. Rep. No. 94-1476 that copyright may extend to the shape of [a] ladies' dress. App. 33a.

6 Thus, proceedings to date in the District Court have focused on the dispute over the proper test for separability and whether the purpose of portraying an attractive appearance is, in the sense of 17 U.S.C. 101, a utilitarian aspect of the Respondents prom dress. On February 18, 2011, Respondent filed a motion to dismiss the first amended complaint under Federal Rule of Civil Procedure 12(b)(6). It is Petitioner's view that the motion required the District Court to 1) identify each "utilitarian function" of the registered prom dress in the sense of 17 U.S.C. 101's definition of a useful article, 2) determine which of those utilitarian functions were also "utilitarian aspects" of the registered prom dress (in the sense of 17 U.S.C. 101's separability requirement as set forth in the definition of Pictorial, graphic, and sculptural works), and 3) perform the separability analysis of Mazer. The District Court, after considering the Respondent's arguments and Petitioner's position that the Aesthetic Features at Issue were not "utilitarian aspects" under 17 U.S.C. 101, made its decision. It accepted Petitioners position that the function of a dress is to cover and protect the body, and that this was a utilitarian aspect of a prom dress. Moreover, again agreeing with Petitioner, the District Court ruled that the individual elements [at issue] can be physically removed from the dress without wholly destroying the dress's functionality. App. 20a.

7 However, the District Court also accepted Respondent's argument that the projection of an attractive appearance was another utilitarian aspect of a prom dress, and that the Aesthetic Features at Issue were not capable of existing independently of the [a]esthetic appeal" which they provided, characterizing that aesthetic appeal as "a core purpose of a prom dress. App. 22a. The motion to dismiss was granted upon the basis, inter alia, that none of the elements has any 'likelihood of marketability.' App. 23a. In its opinion, the District Court did not discuss the interplay between the definition of "pictorial, graphic and sculptural works" in 17 U.S.C. 101, and the definition of a "useful article" in 17 U.S.C. 101. Nor did it treat the relationship between "utilitarian aspects" subject to the separability requirement and the term "utilitarian function," both contained in 101. Accordingly, there was no discussion of Petitioners view of "utilitarian function" (used in the recitation of the test for separability in 17 U.S.C. 101) as a broader term encompassing both "utilitarian aspects," and the mere portrayal of the appearance of an article or the conveying of information, to paraphrase the language in the Act's definition of a "useful article." Rather, in its opinion, the District Court based its decision on various reformulations of the statutory language found in the decisions of the Circuits dealing with the issue of separability, noting that no fewer than six tests have been suggested to explain

8 [conceptual separability] (App. 16a), and that it was unclear what test should be applied (App. 17a). B. Proceedings in the Second Circuit Jovani appealed to a panel of the Second Circuit. The panel reviewed the District Courts decision and affirmed largely for the reasons stated by the district court. In particular, the opinion of the Second Circuit affirmed the finding of the District Court that the Aesthetic Features at Issue were essential to what it agreed to be the utilitarian function of portraying an attractive appearance, stating that the removal of these items would certainly adversely affect the garments ability to function as a prom dress, a garment specifically meant to cover the body in an attractive way for a special occasion. App. 4a. Petitioner pointed out in the proceedings before the Second Circuit that enforcement of the subject copyright registration by enjoining inclusion of the Aesthetic Features at Issue in the prom dresses of others will not have the result of preventing competitors, such as Respondent, from making and selling attractive prom dresses. It was argued that such prom dresses, not appropriating the aesthetic expression of the Aesthetic Features at Issue, would have all the utilitarian functions of covering and protecting the body. Following up on this, Petitioner argued that the relief sought does not run afoul of the public policy concerns that shaped the limitation on copyright detailed in 101 of the Act.

9 While the Second Circuit did discuss the definition in 17 U.S.C. 101 of a useful article as one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information, that discussion was limited to noting that a prom dress was not such an article. Central to this Petition, the opinion of the Second Circuit did not address the relationship between the Act's broader (in Petitioner's view) category of "utilitarian functions" and the "utilitarian aspects" of a useful article which are protected by the separability rule.
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REASONS FOR GRANTING THE PETITION A. Neither Predictability nor Even a Uniform Rule for the Application of the Separability Requirement of the Copyright Act of 1976 Presently Characterizes American Copyright Jurisprudence Despite the substantial investments made every year by all manner of American businesses in the design, advertisement and popularization of useful articles ranging from furniture and kitchen appliances to clothing and other products, the extent to which the aesthetic expression incorporated in such products can be protected is more uncertain than it needs to be. While the separability formula in 101 of the Act might fairly have been seen to suffice as a simple codification of well explored and longstanding rules, which Congress recognized as

10 applying to an "automobile, airplane, ladies' dress, food processor, television set, or any other industrial product," (App. 33a) the courts have had difficulty applying the language of the statute directly, and opted in favor of propounding recharacterizations of the statutory language tuned to the individual cases before them. As a result, a number of courts have remarked upon the difficulties created by the current state of the law, as expounded in the decisions of the Circuits and the District Courts. Mention has already been made of the District Court's statement that it was unclear as to which of at least a half-dozen tests might be applicable to the instant case. Many other courts have noted the same difficulties. Referring to the majority and dissenting opinions in Brandir Internat'l, Inc. v. Cascade Pacific Lumber Co., 834 F.2d 1142 (2d Cir.1987) and Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411 (2d Cir.1985), the Third Circuit has remarked that "[c]ourts 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). The problem has become so difficult that, as remarked by Senior Judge Haight in Lego v. BestLock:

11 "In the Chosun case, on its way to the Second Circuit via an opinion by District Judge Wood, No. 02-CV-7918, 2004 WL 962906 (March 24, 2004), where the parties were competing manufacturers of Halloween costumes, Judge Wood quoted Brandir's methodology for determining whether a copyrightable conceptual separability exists, and declined to engage in the exercise. She said: These tests have proven extremely difficult to apply.... Attempting to judge the copyrightability of Halloween costumes reveals the incoherence of these tests.... It is impossible to say whether the utilitarian predominates over the artistic, or vice-versa. Lego A/S v. Best-Lock Construction Toys, Inc., 874 F. Supp. 2d 75, 96 (D. Conn. 2012). In Galiano v. Harrah's Operating Co., Inc., 416 F.3d 411, 421 (5th Cir. 2005), the Fifth Circuit expressed its unhappiness with its own rule, stating: [s]ometimes, we must favor what might be a suboptimal prophylactic rule because it is more determinate than the theoretically superior but hopelessly subjective one. All of this points to and underscores the pressing need for resolution of the conflicting formulations of the law respecting the separability of aesthetic features vis--vis the utilitarian aspects of a useful article.

12 B. Congressional Intent, Historical Background and the Rationale of the Separability Doctrine Compel a Rule Consistent with the Law of Only Some of the Circuits The preservation of free and fair competition was first addressed in Anglo-American jurisprudence with the enactment in 1623 of the Statute of James I prohibiting monopolies.2 The statute, which outlawed existing monopolies, was a reaction to a patent granting system originally meant to encourage the development of technology, but which had deteriorated into an abusive patronage system. The statute, accordingly, recognized an exception for patents on new technology to be granted to the first inventor for a term of less than 14 years.

The Statute of Monopolies provided: All Monapolies and all Commissions Graunts Licences Charters and tres patents heretofore made or graunted, or hereafter to be made or graunted for the sole buyinge sellinge makinge workinge or usinge of any thinge , are altogether contrary to the Lawes of this Realme, and so are and shal be utterlie void and of none effecte, and in noe wise to be putt in use or execucion.
2

Provided alsoe That any Declaracion before mencioned shall not extend to any tres Patents and Graunt of Privilege for the tearme of fowerteene yeares or under, hereafter to be made of the sole working or makinge of any manner of new Manufactures within this Realme, to the true and first Inventor and Inventors of such Manufactures 21 Jac. 1 c. 3 (1623).

13 The first English copyright statute, referred to as the Statute of Anne, 8 Anne, Ch. 19 (1710) and titled "An Act for the Encouragement of Learning, by Vesting the Copies of Printed Books in the Authors or Purchasers of such Copies, during the Times therein mentioned," also evolved in response to similar monopolistic concerns in the book publishing trade, but did not address the issue of preserving competition in useful articles, insofar as the act was limited to books. The Statute of Anne served as a model for the Copyright Act of 1790, passed under the authority of Article 1, Section 8 of the United States Constitution, which authorized Congress to enact copyright and patent legislation to promote the progress of science and the useful arts, respectively. At least as early as 1879, concerns respecting misuse of the copyright law were discussed in Baker v. Selden, 101 U.S. 99, 102 (1879) where the court noted that a copyright, issued without examination for novelty, could not be used by an author to monopolize a useful "art" (or "technology" in today's parlance) described in a book, and that such a monopoly is properly the province of letters-patent, not of copyright. Seventy-five years later, in Mazer v. Stein this Court spoke directly on the issue of the protectability of artistic expression which forms a part of a useful article, in a case dealing with a porcelain figurine forming the base of a lamp. The Court stated that copyright protects originality rather than novelty or invention, and that while the copyright owner could not exclude others from the general idea of using

14 statuettes of human figures in table lamps, the copyright owner could prevent use of copies of its statuettes incorporated in a useful article. The Court further stated that artistic useful articles are protected in "form but not their mechanical or utilitarian aspects language taken from the copyright regulations of the day and eventually incorporated into the separability requirement of 101 of the Copyright Act of 1976. See Mazer v. Stein, 347 U.S. 201, 212 (1954). The understanding of that language is central to the subject matter of this Petition. The separability requirement lies at the intersection of competing public policies. The first is to afford greater encouragement to the production of literary [or artistic] works of lasting benefit to the world. Mazer v. Stein, supra, 347 U.S. 201, 219 [bracketed material in the original text of the opinion] (citing Washingtonian Co. v. Pearson, 306 U. S. 30, 36 [1939]). The second is the preservation of free competition in the market for useful articles, a public policy which has been ensconced in AngloAmerican jurisprudence for nearly four centuries. The decision in Mazer fully serves both of these policies. The porcelain figurine forming the base of the lamp could easily be replaced by any number of artistic expressions, or by a simple pipe embodying no level of artistic expression, but still providing the full measure of functional utility. While an argument might be advanced that light reflecting off the copyrighted figurine might be somehow different from that reflected by a different shape, the

15 differences would be insignificant from the standpoint of the trade in lamps, the useful article at issue in Mazer. C. The Ordinary Meaning of the Provisions of 17 U.S.C. 101, Viewed in Historical Context, Provide a Simple Separability Test 17 U.S.C. 101 states that the design of a useful article shall be protected as a pictorial, graphic, or sculptural work to the extent that it incorporates features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. It is Petitioner's view that application of the statute to the facts of this case is straightforward. On its face, the statute requires 1) identification of the features at issue, 2) identification of the utilitarian functions of the useful article, 3) determining which, if any, utilitarian functions qualify as utilitarian aspects of the useful article subject to the separability test, and 4) determining whether the features at issue can be identified separately from and capable of existing independently of the utilitarian aspects of the article. In other words, is it possible for the utilitarian aspects to exist in an article which does not incorporate the artistic expression of the features at issue? In the present case, the Aesthetic Features at Issue in Petitioner's prom dress are the glittering array of decorative sequins and jewels, the horizontal

16 gatherings of satiny ruches, and the diaphanous vertically folded tinted and wavy edged tulles. The District Court recognized clothing and protecting the body, as well as what it viewed as the core purpose of projecting an attractive appearance as utilitarian functions of a prom dress. While it is the position of Petitioner that the District Court's finding the projection of an attractive appearance to be a utilitarian aspect is error, one could argue that if one were not interested in projecting an attractive appearance, a much more economical pair of jeans and a blouse would perform the clothing and protecting function. Given its view of the importance of a prom dress projecting an attractive appearance, the District Court was apparently of the opinion that the aesthetic dominated the utilitarian, and the Court therefore could not ignore this function. But that reasoning misses the point. The statute, in its definition of a "useful article," specifically recognizes that there are utilitarian functions which need not be separable to qualify for protection and, naturally, defines useful articles as articles which have some other utilitarian function.3 In its definition of pictorial, graphic, and sculptural works, the statute limits protection of artistic expression to

A "useful article" is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. 17 U.S.C. 101.

17 artistic expression which can exist independently of what the Act calls "utilitarian aspects."4 As stated by the court in Universal Furniture v. Collezione Europa USA, 618 F. 3d 417, 435 (4th Cir. 2010), quoting Carol Barnhart Inc. v. Economy Cover Corp., 773 F. 2d 411 at 419 (2d Cir. 1985): " artistic and aesthetic features that can be conceived of as having been added to, or superimposed upon, an otherwise utilitarian article, are therefore capable of existing independently of the furniture. In the present case, certainly, the Aesthetic Features at Issue are capable of existing independently of the smock. Moreover, the smock would continue to cover and protect the body with the aesthetic features at issue removed. This statement from the court in Universal Furniture might be the most accurate secondary formulization of what must have seemed a very simple concept to the framers of the Copyright Act of 1976: if you can make the useful article with its

"Pictorial, graphic, and sculptural works" include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned; the design of a useful article shall be considered a sculptural work only if, and only to the extent that, such design incorporates sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. 17 U.S.C. 101.

18 functionality intact without appropriating the artistic expression at issue, that artistic expression is separable and protectable under the Act. Whether one dominates the other is not a relevant inquiry under the Act. Taking a step back, in common ordinary English parlance, one would never consider the appearance of a Monet oil painting depicting a cathedral "utilitarian" in any sense of the word, although an oil painting is certainly a useful article. Clearly, the term "utilitarian aspects," as used in 101, is in the same spirit. But the question which comes to mind in considering a Monet oil painting is how can one separate the artistic expression of the painting from such a "useful article." It may be that the framers of the Act wisely avoided this conundrum by limiting the definition of useful article subject to the separability analysis to articles which had a use other than merely portraying appearance. D. Application of the Methodology of the Act Would Have Resulted in an Outcome Consistent with Mazer The District Court found that the Aesthetic Features at Issue were physically separable and that their removal did not wholly destroy the functionality of the prom dress, an apparent reference to the utilitarian aspects of covering and protecting the body. But because it viewed merely projecting the appearance of the dress as a core function, it came to the conclusion that the Aesthetic Features at Issue were not separable from this core

19 function, and found the same to be unprotectable under the copyright law. The opposite result would have occurred had the court considered separability in the context of its genesis in the protection of competition in useful articles. The decorations, embodying the Aesthetic Features at Issue, which were added by Petitioner to the smock do nothing to change the ability of the smock to cover and protect the body. As noted by Petitioner during oral argument before the Second Circuit, the jewels, fabric and netting which are sculpted and arranged into an attractive form and sewn to the smock, as an embodiment of the decorative Aesthetic Features at Issue, are not different from a sculpted golden brooch pined to the bodice of the smock, except in dimension. Yet no one would seriously argue that a sculpted brooch could not be protected because its core purpose was to project an attractive appearance. Nor could any serious argument be made that an otherwise copyright protectable brooch would lose such status under the copyright law once pinned upon the bodice of a dress. This Court is respectfully urged to rule that while the various reformulations of the law espoused by the Circuits produce useful insights into the question of separability, the ultimate question is whether the statutory separability standard, that the useful article retain its non-aesthetic functions after removal of the asserted aesthetic features is met.

20 E. The Current Split between the Circuits: Merely Portraying Appearance Is Not a Utilitarian Aspect While a diverse spectrum of reformulations of the required separability analysis continues to pose a challenge in the task of determining the application of the law, a body of well reasoned jurisprudence closely conforms to the requirements of the Act. In Universal Furniture, as discussed above, the Fourth Circuit implicitly recognized that if the aesthetic features at issue can be conceived of as being added to a useful article, obviously the "utilitarian aspects" of that useful article are separable. Universal Furniture, 618 F. 3d at 435. Similarly, in Pivot Point v. Charlene Products, Inc., 372 F. 3d 913 (7th Cir. 2004), in assessing the protectability under the copyright law of a mannequin head used by students to practice hair styling and makeup application skills, the Seventh Circuit recognized that competition in the sale of such useful articles would not be affected by protecting the aesthetic appearance of the mannequin head because one is not only able to conceive of a different face than that portrayed on the Mara mannequin, but one easily can conceive of another visage that portrays the hungry look [I]ts sculptural features can be identified separately from, and are capable of existing independently of, its utilitarian aspects. It therefore meets the requirements for conceptual separability and is subject to copyright protection. Id at 931.

21 In Masquerade Novelty, the Third Circuit found nose masks to be protectable, reversing the district court and noting that the error in the district court methodology "flows from regarding as a utilitarian function the effect, humor, produced by the only utility the nose masks have, which is in their portrayal of animal noses." While the rule in the Third Circuit is diametrically opposed to the ruling of the Second Circuit in this case, which held that projecting an attractive appearance was, inter alia, a "utilitarian aspect" of a dress, interestingly, in an earlier case, in dicta, the Second Circuit expressed the opposite opinion. In fact, it explicitly endorsed the rule in Masquerade Novelty. In Chosun International, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 330, n. 3 (2d Cir. 2005), the Second Circuit, in an action for infringement of Halloween costumes, stated that: while we do not decide the issue today, we express skepticism regarding Chrisha's claim that Halloween costumes are, as such, copyright ineligible because they permit the wearer to masquerade. Were this the case, masks would necessarily be deemed useful articles. But that view has been expressly rejected by both the Copyright Office and by other circuits. Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 671 (3d Cir.1990) (holding that masks are non-useful articles protected by the Copyright Act)." The Chosun court went on to note, also in dicta, that [m]ore fundamentally, Chrisha's broad

22 understanding of masquerading as a useful function is at odds with the Copyright Act's very definition of useful articles. After all, the Act states that a useful article is one having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. 17 U.S.C. 101 (emphasis added). Chosun, 413 F.3d at 330, n.3. [Emphasis and comments in the original text of the Second Circuit decision]. F. The Competing Tests for Separability In Pivot Point the Seventh Circuit detailed a number of tests suggested for determining when the artistic and utilitarian aspects of useful articles are conceptually separable, namely: "1) the artistic features are primary and the utilitarian features subsidiary, Kieselstein-Cord, 632 F.2d at 993; 2) the useful article would still be marketable to some significant segment of the community simply because of its aesthetic qualities, Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright 2.08[B][3], at 2-101 (2004); 3) the article stimulate[s] in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function, Carol Barnhart, 773 F.2d at 422 (Newman, J., dissenting); 4) the artistic design was not significantly influenced by functional considerations, see Brandir Int'l, 834 F.2d at 1145 (adopting the test forwarded in Denicola, supra, at 741); 5) the artistic features can stand alone as a work of art traditionally conceived, and ... the useful article in which it is embodied would be

23 equally useful without it, Goldstein, 1 Copyright 2.5.3, at 2:67; and 6) the artistic features are not utilitarian, see William F. Patry, 1 Copyright Law & Practice 285 (1994)." Pivot Point Int'l, Inc. v. Charlene Products, Inc., 372 F.3d 913, 923 (7th Cir. 2004). After reviewing these tests, the Seventh Circuit held: Conceptual separability exists, therefore, when the artistic aspects of an article can be conceptualized as existing independently of their utilitarian function. Carol Barnhart, 773 F.2d at 418. This independence is necessarily informed by whether the design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences. Pivot Point, 372 F. 3d at 931, which, for the purposes of this Petition, we number as Test 7. To this, we can now also add the Fifth Circuit's adoption of the Nimmer standard of 8) likelihood-ofmarketability of the aesthetic features. See Galiano v. Harrah's Operating Co., 416 F.3d 411, 421 (5th Cir. 2005). While all of these tests offer useful insights, it is the Petitioner's view that the historical context of protecting competition in purely useful articles, as embodied in 101's definition of a useful article, should first guide the identification of those utilitarian functions which qualify as "utilitarian aspects" subject to the separability requirement, and that the same considerations logically apply in the

24 determination of whether utilitarian aspects are preserved in the useful article after it has been stripped of the aesthetic expression. The test set forth in Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir. 1980), that if the artistic features are primary and the utilitarian features subsidiary, apparently guided the District Court and the Second Circuit, in the present matter, to conclude that the "primary" function of projecting an attractive appearance could not be ignored in identifying the "utilitarian aspects" of the subject prom dress, and led to the error which this Petition seeks to redress. Respectfully, it is believed that this reading of the overall ruling in Kieselstein-Cord is incorrect, but flows from that decision's inclusion of a rule which finds no support in the Copyright Act of 1976, its legislative history, or the jurisprudence which preceded that Act. Nevertheless, putting aside this criticism, viewed in terms of the rationale for the separability requirement, the decision in Kieselstein-Cord, involving an aesthetic component consisting of a carved design on a belt buckle comes to the correct result. The carved design clearly qualifies as separable from the belt buckle to which it is secured and, accordingly, that design feature is entitled to copyright protection. The explanation of Kieselstein-Cord given by the Second Circuit in Chosun follows the approach advocated by the Petitioner in this matter:

25 Thus, in Kieselstein-Cord, 632 F.2d 989 (2d Cir. 1980), we concluded that the plaintiff's belt buckle designs were copyrightable. Taken as a whole, the belt undeniably was a "useful article" which performed the service of preventing one's pants from falling down. The ornate buckle design, however, was conceptually separable from that useful "belt" function. The design - which did not enhance the belt's ability to hold up one's trousers - could properly be viewed as a sculptural work with independent aesthetic value, and not as an integral element of the belt's functionality. See id. at 993. It was, therefore, copyrightable. Chosun, 413 F.3d at 328. The test in Brandir, whether the artistic design was significantly influenced by functional considerations, would examine facts which might indicate whether removal of the aesthetic elements would impact the utilitarian aspects of a useful article. However, the statute does not speak in terms of the motivational influence behind the design, but only to the separability of the aesthetic and functional. The same may also be said about the Seventh Circuit's consideration of whether artistic discretion dominates practical necessity as the driving force behind design choices. However, again this formulation of the test may be useful in providing some insight to the separability issue, perhaps even showing separability where the aesthetic feature at issue might actually reduce functionality and its

26 removal from the useful article would result in improved performance. Patry's formulation, that the artistic features are not utilitarian, speaks to the longstanding public policy of not granting copyright protection to utilitarian features and is, as described by the court in Pivot Point, consistent with Petitioner's position. See Pivot Point, 372 F.3d at 923. G. A Test That Involves Aesthetic Merit Conflates the Different Requirements of Separability and Level of Originality Tests 1, 2, 3, 5 and 8 are interesting insofar as they all involve a measurement of aesthetic merit. Frankly, on first impression, this gives those tests an intuitive feeling of correctness. This seems to flow from the fact that copyright law does require a minimum level of originality, which is, in one sense, a requirement which one might argue to be related to aesthetic merit. However, it is important to keep in mind that H.R. Rep. 94-1476 explicitly states that "[t]he phrase original works or authorship, which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present copyright statute. This standard does not include requirements of novelty, ingenuity, or esthetic merit, ... H.R. REP. NO. 94-1476 at 51 (1976). App. 28a. More importantly, separability and level of originality are two distinct prerequisites for copyright protection. In the context of a separability

27 analysis, mixing in a judgment involving aesthetic merit can be distracting and perplexing. See, for example, the comment in Bonazoli v. RSVP Intern., Inc., 353 F. Supp. 2d 218, 224 (D.R.I. 2005) where, after noting that the "analysis often sounds more like metaphysics than law," the Court explicitly looks to the issue of originality in assessing the utilitarian aspects of the shape of measuring spoons: Put another way, like the bicycle rack in Brandir, the heart shape arrow design in this case (which certainly is not original to the Plaintiff) was clearly adapted to be a set of measuring spoons. As urged by the Petitioner, the rejection of merit based separability tests keeps the issues separate and makes the analysis a straightforward comparison of versions of the useful article with and without the aesthetic expression. The separate assessment of originality is not a difficult one under the law. Indeed, as noted by this Court, [t]o be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, no matter how crude, humble or obvious it might be. Feist Publ'ns., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 358 (1991). Indeed, cases where a sufficient level of originality has not been found are few and far between. See, for example, Kitchens of Sara Lee, Inc. v. Nifty Foods Corporation, 266 F. 2d 541 (2d Cir. 1959), where a conventionally shaped slice of cake, was found to lack sufficient originality to support copyright protection as a sculptural work, where that

28 slice was cut from a cake baked in a publicly available aluminum baking pan, and where the design of that pan was not proprietary to the copyright claimant. The effect of these erroneous merit-based separability analyses (directly rejected in the legislative history of the Copyright Act of 1976) is determinative and dramatic. This can be seen with a reference to the decision in Galiano. Based on its likelihood-of-marketability of the aesthetic features test, the court in Galiano found "costume look" casino employee uniforms, featuring embroidery, logos, coin designs and vegetable shaped chefs hats, not protectable under the copyright law for lack of separability because they did not meet the "likelihood-of-marketability standard." Galiano, 416 F. 3d at 421. This contrasts with the protection of sculptural nose masks in the Masquerade Novelty, and the dicta in Chosun recognizing the copyright eligibility of features, such as plush stuffed animal head features, which look like they might be a part of a plush stuffed toy animal, which have no function but to project appearance. CONCLUSION The present diversity of tests for determining the separability of aesthetic expression from useful articles represents a studied consideration of the law as applied to a wide range of products, including prom dresses, furniture, lighting products, masks, mannequins, costumes, bicycle racks, toys, and measuring spoons. Despite over thirty years of decisions interpreting the Act, the Circuits remain

29 clearly divided over the proper test for separability. Many tests look to the merit of the artistic work at issue, despite the fact that this approach finds no support in 101, and is even explicitly rejected in the legislative history of the Act. Courts confuse the separability issue with the originality issue, synthesizing tests which they themselves criticize using such characterizations as conundrum and suboptimal prophylactic rule, and have generally characterized as unworkable. On at least one occasion a court has refused to even engage in the exercise. The various tests are easily susceptible to criticism. In trying to forge a way, courts are beginning to develop tests which are specific to particular types of products. For example, one court adopt[ed] the likelihood-of-marketability standard for garment design only." See Galiano, 416 F. 3d at 421 [Emphasis in the original]. The promulgation of more and more tests straying from the statutory language and sometimes directly clashing with the legislative history will not serve such important fashion and design industries as the garment industry, the furniture industry and the home furnishings industry. The issues have been well developed by the courts and are ripe for resolution. This Court is respectfully urged to address a conflicting body of law which the courts themselves have vociferously found lacking. Is it relevant to the separability analysis whether or not the aesthetic expression stimulates in the mind of an observer a

30 concept separate from that of the useful object? If the question posed in the statutory test is the separability of the utilitarian aspects from the aesthetic expression, does it matter whether one predominates over the other, or what the designer's intent was, or whether the aesthetic features at issue have merit? If the useful object can be made without the claimed aesthetic expression and retain its utilitarian function, need a court determine whether the design is marketable because of its aesthetic qualities, or ask itself if the artistic features can stand alone as a work of art traditionally conceived? The clear answer to all of these questions is "no" because the questions are all irrelevant to the question of separability and the public policies behind the separability requirement. The legislative history of the Copyright Act of 1976 specifically rejects any merit-based requirement under the Act. The separability test based on likelihood of marketability, taken from the Fifth Circuit and followed by the District Court, and not overruled by the Second Circuit, as a merit-based standard flies in the face of the clear meaning of 101 of the Act. Rather, the proper test is to find separability where the utilitarian aspects of the useful article are retained in a version of the useful article which does not incorporate the aesthetic features at issue. That is the plain meaning of 101. The diverse and conflicting nature of the various tests for separability espoused by the different Circuits and different from

31 the statutory standard militates strongly in favor of the granting of this Petition. Respectfully submitted, ANTHONY H. HANDAL (Counsel of Record) TIM BUKHER DAVID DUSHANE HANDAL & MOROFSKY, LLC 501 Kings Highway East Suite 108 Fairfield, CT 06825 (917) 880 - 0811 (handal@handalglobal.com) JOSEPH SOFER ROBERT M. HAROUN SOFER & HAROUN, LLP 317 Madison Avenue, Suite 910 New York, NY 10017 January 8, 2013

1a APPENDIX A (Court of Appeals Opinion) UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT PRESENT: REENA RAGGI, DENNY CHIN, SUSAN L. CARNEY SUMMARY ORDER JOVANI FASHION, LIMITED, Plaintiff-Appellant, v. FIESTA FASHIONS, Defendant-Appellee, CINDY COLLECTION, CINDERELLA DIVINE, INCORPORATED, COLORS FASHION, INCORPORATED, ASPEED DESIGN CORPORATION, UNIQUE VINTAGE, INCORPORATED, DISCOUNTDRESSUP.COM, JM DREAMLINE, INCORPORATED, THE ROSE DRESS, INCORPORATED, RORY BALLARD, JOHN DOE 1THROUGH 100, JULIE'S COLLECTION, Defendants. No. 12-598-cv October 15, 2012 PLEASE REFER TO FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1

2a GOVERNING THE CITATION TO UNPUBLISHED OPINIONS. Appeal from a judgment of the United States District Court for the Southern District of New York (John G. Koeltl, Judge). UPON DUE CONSIDERATION, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED that the judgment entered on July 7, 2011, is AFFIRMED. Plaintiff Jovani Fashion, Ltd. ("Jovani") appeals from the dismissal of its complaint charging defendant Fiesta Fashions ("Fiesta") with infringing Jovani's registered copyright for the design of a prom dress. See 17 U.S.C. 101 et seq.; Fed. R. Civ. P. 12(b)(6). We review a Rule 12(b)(6) dismissal de novo, accepting all factual allegations in the complaint as true and drawing all reasonable inferences in plaintiff's favor. See Chase Grp. Alliance LLC v. City of N.Y. Dep't of Fin., 620 F.3d 146, 150 (2d Cir. 2010). To survive a motion to dismiss, a complaint must allege "sufficient factual matter, accepted as true, to state a claim to relief that is plausible on its face. 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 misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 678, 129 S. Ct. 1937, 173 L. Ed. 2d 868 (2009) (internal quotation marks and citation omitted). Upon independent review of the record, we conclude, largely for the reasons stated by the district court in its thorough and well-reasoned opinion, that Jovani failed to satisfy its pleading burden.

3a It is well settled that articles of clothing are "useful articles" not protected by the Copyright Act. See 17 U.S.C. 101; Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452, 455 (2d Cir. 1989) (citing Fashion Originators Guild v. FTC, 114 F.2d 80, 84, 31 F.T.C. 1837 (2d Cir. 1940) (L. Hand, J.), aff'd 312 U.S. 457, 61 S. Ct. 703, 85 L. Ed. 949, 32 F.T.C. 1856 (1941)). Jovani nevertheless maintains that the prom dress at issue merits copyright protection because its design constitutes a combination of features "that can be identified separately from and are capable of existing independently of, the utilitarian aspects of the article," 17 U.S.C. 101, specifically, the arrangement of decorative sequins and crystals on the dress bodice; horizontal satin ruching at the dress waist; and layers of tulle on the skirt. We are not persuaded. We have construed 17 U.S.C. 101 to afford protection to design elements of clothing only when those elements, individually or together, are separable--"physically or conceptually"--from the garment itself. Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 328 (2d Cir. 2005). Physical separability can be shown where one or more decorative elements "can actually be removed from the original item and separately sold, without adversely impacting the article's functionality." Id. at 329. That is plainly not the case here. Jovani has not alleged, nor could it possibly allege, that the design elements for which it seeks protection could be removed from the dress in question and separately sold. Cf. Mazer v. Stein, 347 U.S. 201, 203, 74 S. Ct. 460, 98 L. Ed. 630, 1954 Dec. Comm'r Pat. 308 (1954) (recognizing that statuette serving as lamp base

4a could be removed and sold separately); KieselsteinCord v. Accessories by Pearl, Inc., 632 F.2d 989, 991, 993 (2d Cir. 1980) (recognizing that decorative belt buckles were sold in jewelry stores and worn as ornaments for parts of body other than waist). Moreover, as the district court correctly observed, the removal of these items would certainly adversely affect the garment's ability to function as a prom dress, a garment specifically meant to cover the body in an attractive way for a special occasion. No different conclusion obtains as to conceptual separability, which is evident when a designer exercises artistic judgment "independently of functional influences," rather than as "a merger of aesthetic and functional considerations." Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987). Applying this test in Chosun, where the plaintiff claimed copyright protection for a Halloween costume, we stated that an element of a costume would be conceptually separable if it "invoke[d] in the viewer a concept separate from that of the costume's 'clothing' function," and if its "addition to the costume was not motivated by a desire to enhance the costume's functionality qua clothing." Chosun Int'l, Inc. v. Chrisha Creations, Ltd., 413 F.3d at 330; see also Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d at 993. That is not this case. Here, the artistic judgment exercised in applying sequins and crystals to the dress's bodice and in using ruched satin at the waist and layers of tulle in the skirt does not invoke in the viewer a concept other than that of clothing--as the design of a

5a Halloween costume in Chosun invokes a character. Rather, these design elements are used precisely to enhance the functionality of the dress as clothing for a special occasion. In short, here the aesthetic merged with the functional to cover the body in a particularly attractive way for that special occasion. In urging otherwise, Jovani argues that design elements that make a dress more attractive cannot be intrinsic to the garment's "utilitarian function," which is simply "covering the body." Appellant Br. 24. This narrow statement of a garment's function is not supported by our precedent, which recognizes that clothing, in addition to covering the body, serves a "decorative function," so that the decorative elements of clothing are generally "intrinsic" to the overall function, rather than separable from it. Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d at 455 (observing that garments' decorative elements are "particularly unlikely to meet [the] test" of conceptual separability.) No different conclusion is warranted by 101's definition of a "useful article" as one having an intrinsic utilitarian function "that is not merely to portray the appearance of the article or to convey information." Although Jovani argues that a decoration on a dress necessarily "portrays the appearance" of the dress and, therefore, is outside the scope of usefulness, we have construed this statutory phrase more narrowly to identify only a small category of items whose sole usefulness resides in their appearance. See Hart v. Dan Chase Taxidermy Supply Co., 86 F.3d 320, 323 (2d Cir. 1996) (holding that taxidermy mannequin for fish

6a skins has function of portraying its own appearance and, therefore, may be copyrighted); accord Chosun Int'l Inc. v. Chrisha Creations, Ltd., 413 F.3d at 329 n.3 (citing Hart in expressing skepticism that masks or Halloween costumes that permit wearer "to masquerade" have a utilitarian function other than to portray appearance of article). Prom dresses do not fit within this small sphere. While such dresses plainly have a decorative function, the decorative choices, as we have already observed, merge with those that decide how (and how much) to cover the body. Thus, a jeweled bodice covers the upper torso at the same time that it draws attention to it; a ruched waist covers the wearer's midsection while giving it definition; and a short tulle skirt conceals the wearer's legs while giving glimpses of them. In sum, the aesthetic and the functional are inseparable in the prom dress at issue and, therefore, Jovani cannot state a plausible copyright claim. See Brandir Int'l, Inc. v. Cascade Pac. Lumber Co., 834 F.2d at 1145. We have considered Jovani's remaining arguments on appeal and conclude that they are without merit. Accordingly, the judgment of the district court is AFFIRMED. FOR THE COURT: CATHERINE OHAGAN WOLFE, CLERK

7a APPENDIX B (District Court Opinion)

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK JOVANI FASHION, LTD., Plaintiff, - against CINDERELLA DIVINE, INC., ET AL., Defendants. 10 Civ. 7085 (JGK) MEMORANDUM OPINION AND ORDER 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.

8a I. 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). In considering such a motion, the Court generally must accept the material factual allegations in the complaint as true. See J.S. ex rel. N.S. v. Attica Cent. Sch., 386 F.3d 107, 110 (2d Cir. 2004). 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 U.S. Dist. LEXIS 24828, 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 exists. See Filetech S.A. v. France Telecom S.A., 157 F.3d 922, 932 (2d Cir.

9a 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 legally sufficient." Goldman v. Belden, 754 F.2d 1059, 1067 (2d Cir. 1985). 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." Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570, 127 S. Ct. 1955, 167 L. Ed. 2d 929 (2007). "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 misconduct alleged." Ashcroft v. Iqbal, 556 U.S. 662, 129 S. Ct. 1937, 1949, 173 L. Ed. 2d 868 (2009). 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

10a inapplicable to legal conclusions." Id.; see 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. II. The following facts otherwise indicated. are undisputed, unless

Jovani is a designer and manufacturer of women's dresses, particularly evening dresses, pageant gowns, prom dresses, and cocktail dresses. (First Amended Compl. ("FAC") 22.) Between 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

11a dressmakers or retailers, along with John Doe defendants, in this Court. Of 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. (FAC 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.) Additionally, 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 elements. (Pl.'s Mem. at 7.) Pictures of Jovani's style # 154416 and Fiesta's allegedly infringing dress are attached as Appendix A. (FAC Ex. M.) The First Amended Complaint also alleges that Unique sells several styles of infringing dresses.

12a (FAC 63, 104, 109, 144, 147, 193, 196, 343, 346, 354, 355.)1

III. After Fiesta filed an initial motion to dismiss, Jovani amended its complaint and the Court denied Fiesta's motion as moot. In response, Fiesta and Unique each filed a motion to dismiss. Fiesta argues that Jovani's copyright registrations only accord copyright protection to twodimensional 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 12(b)(6). Fiesta's motion specifically discusses the aspects of dress style # 154416 that Jovani claims are copyrightable.

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.

13a Unique raises the same arguments as Fiesta, with two differences. First, Unique frames its arguments as grounds for dismissal under both Rule 12(b)(6) and Rule 12(b)(1). Second, Unique does not specifically discuss the copyrightability of the allegedly infringed individual dresses or their constituent parts. IV. A. The defendants' first argument, that Jovani's copyright registrations protect only the photographic images of dresses in their registered catalogs, is easily disposed of. The registration of a catalog as a single work is commonly used to register threedimensional copyrightable items pictured in the catalog, rather than merely the two-dimensional pictures themselves. 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 three-dimensional works of visual art, rather than "the threedimensional work" itself. U.S. Copyright Office, Copyright Registration for Works of the Visual Arts 4, Circular 40, Nov. 2010 (emphasis added). Fiesta

14a 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. B. 1. 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 Cir. 2005). 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

15a the article." 17 U.S.C. 101; see generally Chosun, 413 F.3d at 327-30. It is well settled that dress designs are useful articles for the purposes of the Copyright Act and thus "are not typically copyrightable." 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 useful article. 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." Chosun, 413 F.3d at 329 (internal quotation marks and citation omitted). It 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 separable. 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

16a 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 329. 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 clothing." 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 considerations." 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

17a "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. See Pivot Point Int'l, Inc. v. Charlene Prods., Inc., 372 F.3d 913, 931 (7th Cir. 2004) (quoting Brandir, 834 F.2d at 1145). The Court 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 suboptimal 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. See 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

18a the same, and therefore there is no need to consider extensively the differences among the various tests. 2. 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 not copyrightable." (Unique Mem. at 7.) This argument 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." 17 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. See Chosun, 413 F.3d at 328 ("[S]eparable elements in clothing, to the extent that they exist, may be eligible for copyright protection."). The Court cannot bypass this inquiry merely because clothing designs are rarely protectable. Indeed, even 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 animal-shaped items that can be worn." United States Copyright Office Policy Decision: Registrability of Costume Designs, 56 Fed. Reg.

19a 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 are unprotectable. Absent such an argument, Unique's motion must be denied. 3. Fiesta's motion is substantially more specific. Fiesta 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 wire-edged 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 components. (Pl.'s Mem. at 7.)

20a 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 U.S. Dist. LEXIS 74314, 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 evaluation."). 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. For the 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. But physical separability requires that a design element "can actually be removed from the original item and separately sold, without adversely

21a 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 group. 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 influences." 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.

22a Although different 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. Aesthetic 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. See 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 being 'decorative.' The Regulation would thus cease to constitute a meaningful barrier to copyright.").

23a Fourth, none of the elements has any "likelihood of marketability." Galiano, 416 F.3d at 421. As discussed above, removed from the dress, none of the elements has any independent marketable worth. 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. Rather, if 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. By arguing 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.

24a 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 appliques 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, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991)). Jovani overlooks two key differences between Knitwaves and this case. First, Knitwaves did not address the issue of copyrightability. 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. Id. at 1002. 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 material. Second, Knitwaves concerned fabric designs. Knitwaves, 71 F.3d at 1002. Fabric designs, unlike clothing designs, "are considered 'writings' for purposes of copyright law and are accordingly protectible." Id. at 1002; see also Folio Impressions,

25a 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. Knitwaves, 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 Similarly, the Supreme Court case from which Knitwaves drew the "selected, coordinated, and arranged" language is also inapposite. It concerned compilations, which are specifically protected by the Copyright Act to the extent of the author's contributions. See 17 U.S.C. 103(b); Feist Publ'ns,

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.

26a 499 U.S. at 350-51. Useful articles, by contrast, are explicitly excluded from protection, except to the extent that their features are separable from their utilitarian aspects. Id. 101. It is not readily obvious why the basic characteristics of compilations -- their selection, coordination, and arrangement -- would 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. Because this is the only dress style that Fiesta is alleged to have infringed, Fiesta's motion to dismiss is granted. CONCLUSION

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.
3

27a For the foregoing reasons, 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 complaint 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. See, e.g., Abu Dhabi Commercial Bank v. Morgan Stanley & Co., No. 08 Civ. 7508, 2009 U.S. Dist. LEXIS 96114, 2009 WL 3346674, at *2 (S.D.N.Y. Oct. 15, 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 amendment."); 2009 U.S. Dist. LEXIS 96114, [WL] at *2 n.14 (collecting cases). The Clerk is directed to close all pending motions. SO ORDERED. Dated: New York, New York July 6, 2011 /s/ John G. Koeltl John G. Koeltl United States District Judge

28a APPENDIX C (House Report No. 94-1476) Relevant excerpt from: HOUSE REPORT NO. 94-1476 H.R. REP. NO. 94-1476, pp. 51 - 55 (1976) Original Works of Authorship. The two fundamental criteria of copyright protection - originality and fixation in tangible form are restated in the first sentence of this cornerstone provision. The phrase "original works or authorship," which is purposely left undefined, is intended to incorporate without change the standard of originality established by the courts under the present copyright statute. This standard does not include requirements of novelty, ingenuity, or esthetic merit, and there is no intention to enlarge the standard of copyright protection to require them. In using the phrase "original works of authorship," rather than "all the writings of an author" now in section 4 of the statute [section 4 of former title 17], the committee's purpose is to avoid exhausting the constitutional power of Congress to legislate in this field, and to eliminate the uncertainties arising from the latter phrase. Since the present statutory language is substantially the same as the empowering language of the Constitution [Const. Art. I, Sec. 8, cl. 8], a recurring question has been whether the statutory and the constitutional provisions are coextensive. If so, the courts would be faced with the alternative of holding copyrightable something that Congress clearly did

29a not intend to protect, or of holding constitutionally incapable of copyright something that Congress might one day want to protect. To avoid these equally undesirable results, the courts have indicated that "all the writings of an author" under the present statute is narrower in scope than the "writings" of "authors" referred to in the Constitution. The bill avoids this dilemma by using a different phrase - "original works of authorship" - in characterizing the general subject matter of statutory copyright protection. The history of copyright law has been one of gradual expansion in the types of works accorded protection, and the subject matter affected by this expansion has fallen into two general categories. In the first, scientific discoveries and technological developments have made possible new forms of creative expression that never existed before. In some of these cases the new expressive forms electronic music, filmstrips, and computer programs, for example - could be regarded as an extension of copyrightable subject matter Congress had already intended to protect, and were thus considered copyrightable from the outset without the need of new legislation. In other cases, such as photographs, sound recordings, and motion pictures, statutory enactment was deemed necessary to give them full recognition as copyrightable works. Authors are continually finding new ways of expressing themselves, but it is impossible to foresee the forms that these new expressive methods will take. The bill does not intend either to freeze the

30a scope of copyrightable subject matter at the present stage of communications technology or to allow unlimited expansion into areas completely outside the present congressional intent. Section 102 implies neither that that subject matter is unlimited nor that new forms of expression within that general area of subject matter would necessarily be unprotected. The historic expansion of copyright has also applied to forms of expression which, although in existence for generations or centuries, have only gradually come to be recognized as creative and worthy of protection. The first copyright statute in this country, enacted in ann, designated only "maps, charts, and books"; major forms of expression such as music, drama, and works of art achieved specific statutory recognition only in later enactments. Although the coverage of the present statute is very broad, and would be broadened further by the explicit recognition of all forms of choreography, there are unquestionably other areas of existing subject matter that this bill does not propose to protect but that future Congresses may want to. ... Categories of Copyrightable Works. The second sentence of section 102 lists seven broad categories which the concept of "works of authorship" is said to "include". The use of the word "include," as defined in section 101, makes clear that the listing is "illustrative and not limitative," and that the seven categories do not necessarily exhaust the scope of "original works of authorship" that the bill is intended to protect. Rather, the list sets out the

31a general area of copyrightable subject matter, but with sufficient flexibility to free the courts from rigid or outmoded concepts of the scope of particular categories. Correspondingly, the definition of "pictorial, graphic, and sculptural works" carries with it no implied criterion of artistic taste, aesthetic value, or intrinsic quality. The term is intended to comprise not only "works of art" in the traditional sense but also works of graphic art and illustration, art reproductions, plans and drawings, photographs and reproductions of them, maps, charts, globes, and other cartographic works, works of these kinds intended for use in advertising and commerce, and works of "applied art." . In accordance with the Supreme Court's decision in Mazer v. Stein, 347 U.S. 201 (1954) [74 S.Ct. 460, 98 L. Ed. 630, rehearing denied 74 S.Ct. 637, 347 U.S. 949, 98 L.Ed. 1096], works of "applied art" encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection. The Committee has added language to the definition of "pictorial, graphic, and sculptural works" in an effort to make clearer the distinction between works of applied art protectable under the bill and industrial designs not subject to copyright protection. The declaration that "pictorial, graphic, and sculptural works" include "works of artistic

32a craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned" is classic language; it is drawn from Copyright Office regulations promulgated in the 1940's and expressly endorsed by the Supreme Court in the Mazer case. The second part of the amendment states that "the design of a useful article * * * shall be considered a pictorial, graphic, or sculptural work 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 article." A "useful article" is defined as "an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information." This part of the amendment is an adaptation of language added to the Copyright Office Regulations in the mid-1950's in an effort to implement the Supreme Court's decision in the Mazer case. In adopting this amendatory language, the Committee is seeking to draw as clear a line as possible between copyrightable works of applied art and uncopyrighted works of industrial design. A two - dimensional painting, drawing, or graphic work is still capable of being identified as such when it is printed on or applied to utilitarian articles such as textile fabrics, wallpaper, containers, and the like. The same is true when a statue or carving is used to embellish an industrial product or, as in the Mazer case, is incorporated into a product without losing its ability to exist independently as a work of art. On

33a the other hand, although the shape of an industrial product may be aesthetically satisfying and valuable, the Committee's intention is not to offer it copyright protection under the bill. Unless the shape of an automobile, airplane, ladies' dress, food processor, television set, or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article, the design would not be copyrighted under the bill. The test of separability and independence from "the utilitarian aspects of the article" does not depend upon the nature of the design - that is, even if the appearance of an article is determined by aesthetic (as opposed to functional) considerations, only elements, if any, which can be identified separately from the useful article as such are copyrightable. And, even if the three-dimensional design contains some such element (for example, a carving on the back of a chair or a floral relief design on silver flatware), copyright protection would extend only to that element, and would not cover the over-all configuration of the utilitarian article as such. A special situation is presented by architectural works. An architect's plans and drawings would, of course, be protected by copyright, but the extent to which that protection would extend to the structure depicted would depend on the circumstances. Purely nonfunctional or monumental structures would be subject to full copyright protection under the bill, and the same would be true of artistic sculpture or decorative ornamentation or embellishment added to

34a a structure. On the other hand, where the only elements of shape in an architectural design are conceptually inseparable from the utilitarian aspects of the structure, copyright protection for the design would not be available.

35a APPENDIX D (Exhibit M to Complaint)

36a