No. 12-863 IN THE SUPREME COURT OF THE UNITED STATES ____________ JOVANI FASHION, LIMITED, Petitioner, v.

FIESTA FASHIONS, ET AL., Respondents. ____________ On Petition for a Writ of Certiorari to the United States Court of Appeals for the Second Circuit _____________ BRIEF IN OPPOSITION _____________ TERENCE P. ROSS Counsel of Record CROWELL & MORING LLP 1001 Pennsylvania Ave., NW Washington, DC 20004-2595 (202) 624-2500 tross@crowell.com Attorneys for Respondent Fiesta Fashion

i QUESTION PRESENTED Whether the decision below correctly found, based on the facts pleaded in the First Amended Complaint, that certain elements of the dress at issue were not copyrightable because they were not physically or conceptually separable from the dress.

ii RULE 29.6 STATEMENT Pursuant to Rule 29.6 of the Rules of the Supreme Court of the United States, Respondent Fiesta Fashion states that it is a privately owned corporation organized under the laws of the State of California and is not owned by any parent corporation nor does any publicly traded corporation own 10% or more if its stock.

iii TABLE OF CONTENTS Page(s) QUESTION PRESENTED ....................................... i RULE 29.6 STATEMENT........................................ ii TABLE OF AUTHORITIES ................................... iv STATEMENT OF THE CASE ................................. 1 A. District Court Proceedings.......................... 1 B. Circuit Court Proceedings........................... 4 REASONS FOR DENYING THE PETITION......... 6 A. There Is No Conflict Among The Circuit Courts. ............................................. 6 B. The District Court Found The Constituent Elements Of The Prom Dress At Issue Not To Be Copyrightable Under Any Test. .................. 9 CONCLUSION ....................................................... 10

iv

TABLE OF AUTHORITIES CASES Page(s)

Brandir Intl, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) .......................... 5, 9 Chosun Intl, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005) ............................ 3, 5 Fashion Originators Guild of America v. FTC, 114 F.2d 80 (2d Cir. 1940), affd, 312 U.S. 457 (1941) ............................................................ 6 Galiano v. Harrahs Operating Co., Inc., 416 F.3d 411 (5th Cir. 2005)........................... 8, 9 Herb v. Pitcairn, 324 U.S. 117 (1945) ............................................. 9 Mazer v. Stein, 347 U.S. 201 (1954) ............................................. 5 Pivot Point Intl, Inc. v. Charlene Products, Inc., 372 F.3d 913 (7th Cir. 2004)........................... 7, 8 Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488 (4th Cir. 1996)................................. 9

v Page(s) Whimsicality, Inc. v. Rubies Costume Co., 891 F.2d 452 (2d Cir. 1989) ................................ 6 STATUTES Copyright Act. 17 U.S.C. 101 ............................ 6, 7 OTHER AUTHORITIES H.R. Rep. No. 94-1476 (1976) .................................. 7

1 STATEMENT OF THE CASE This case concerns the copyrightability of a prom dress manufactured by Petitioner Jovani Fashion, Limited (Jovani). Jovani is one of the largest manufacturers of prom dresses in the United States. One such prom dress manufactured by Jovani is Style 154416 (the 154416 Dress) which is the dress at issue in this lawsuit. Jovani has obtained Registration No. VA1-749-891 (the 891 Registration) from the United States Copyright Office. The 891 Registration issued as a copyright on two-dimensional artwork based on Jovanis submission of an image of the 154416 Dress. Respondent Fiesta Fashion (Fiesta) manufactures and sells womens dresses, including prom dresses, in the United States. Jovani alleges that a single Fiesta prom dress, Style F150021, infringes the 891 Registration. A. District Court Proceedings On September 15, 2010, Jovani filed suit against Fiesta and nine other named defendants (all smaller competitors of Jovani), and an unspecified number of John Doe defendants. As amended, the Complaint alleged a single cause of action for copyright infringement against Fiesta. That cause of action alleged that the 891 Registration provides copyright protection on the ornamental design and arrangement on the face of the fabric of the protected 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.

2 Fiesta filed a motion to dismiss the First Amended Complaint arguing that: (1) Jovani only owns a copyright in a two-dimensional image of the 154416 Dress and (2) neither the 154416 Dress or any constituent element of it is copyrightable. At the hearing on Fiestas motion to dismiss, Jovani changed its position as to what was copyrightable. Jovani conceded that none of the constituent elements of the 154416 Dress were individually copyrightable. Pet. App. 23a. Rather, Jovani argued that the selection, arrangement, and coordination of the constituent elements of the 154416 Dress taken in combination are copyrightable. Pet. App. 23a. These elements were the beaded bodice, the ruchedsatin waistband and back; the ballerina tulle skirt; and the wired edging on the tulles. Pet. App. 19a. Jovanis concession that each individual element of the 154416 Dress standing alone is not copyrightable was driven by the undisputed facts. First, there is no copyrightable pattern to the beading on the bodice. At the hearing on Fiestas motion to dismiss, Jovani admitted this under questioning by the district court. Pet. App. 23a. Second, it is clear that the wire edging at the bottom of the tulles exists only to shape the tulles a utilitarian function that is not copyrightable. Third, the tulles themselves exist only to give form to the skirt another uncopyrightable utilitarian function. Finally the ruched-satin waistband and back serve to connect the bodice to the skirt yet another uncopyrightable utilitarian function. In light of these facts, Jovani was left to argue that, while the individual constituent elements of the 154416 Dress

3 cannot be copyrighted, their combination was copyrightable as a compilation. Pet. App. 23a-24a. The district courts decision recognized that dresses are not copyrightable. Moreover, the district court correctly refused to allow Jovani to circumvent this prohibition by obtaining copyright protection on a combination of dress parts. The district court held that useful articles, such as dresses, may not claim copyright protection as a compilation. Pet. App. 26a. The district court observed that to allow copyrightability as a compilation would render all useful objects copyrightable. Pet. App. 25a-26a. The district court did note that the constituent elements of a dress may be copyrightable if physically or conceptually separable from the dress. Pet. App. 15a. Accordingly, the district court analyzed whether any constituent element of the 154416 Dress was physically or conceptually separable. With respect to physical separability, the district court adopted the test put forward in Chosun Intl, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005). Pet. App. 15a. Under that test, physical separability is established if an element can actually be removed from the original item and separately sold, without adversely impacting the articles functionality. 413 F.3d at 329. The district court correctly concluded that none of the constituent elements are physically separable from the 154416 Dress. The district court stated: 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

4 constituent material). Pet. App. 21a. The district court pointed out that Jovani does not suggest any way in which any of the distinct elements it identifies could be reused and resold, and none is apparent. Pet. App. 21a. Accordingly, the district court found that each element is plainly useable only as a component of a dress, or, at best, a similar item of clothing such as a skirt or blouse. Pet. App. 21a. Turning to conceptual separability, the district court concluded that there was no single exclusive test for determining whether conceptual separability existed. The district court identified multiple tests suggested by various circuit courts for use in various contexts and examined Jovanis claim of copyrightability under each of those tests. The district court held that none of the various tests for conceptual separability protect the elements of the dress, either individually or as a group. Pet. App. 21a. Accordingly, the district court granted Fiestas motion and dismissed Jovanis First Amended Complaint with prejudice. Jovani thereupon appealed that ruling to the United States Court of Appeals for the Second Circuit. B. Circuit Court Proceedings In a summary order, the Second Circuit affirmed in toto the district court decision, describing it as a thorough and well-reasoned opinion. Pet. App. 2a. The Second Circuit confirmed that design elements of clothing are copyrightable only when those elements, individually or together, are separable

5 physically or conceptually from the garment itself. Pet. App. 3a. Relying on this Courts decision in Mazer v. Stein, 347 U.S. 201 (1954), the Second Circuit held that physical separability can only be established when an element of a dress can be removed from the dress and separately sold. Pet. App. 3a. It noted that: 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. Pet. App. 3a. Furthermore, the Second Circuit reiterated its long-standing rule that conceptual separability exists only when artistic judgment is exercised independently of functional influences, not as a merger of aesthetic and functional considerations. Pet. App. 4a (quoting Brandir Intl, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1145 (2d Cir. 1987)). This is only achieved when a decorative element invokes in the viewer a concept separate from that of the costumes clothing function and if its addition to the dress was not motivated by a desire to enhance the costumes functionality qua clothing. Pet. App. 4a (quoting Chosun Intl, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 330 (2d Cir. 2005)). The Second Circuit concluded that the application of sequins to the bodice, the use of ruched satin at the waist and the addition of layers of tulle in the skirt does not invoke in a viewer any concept other than a dress. These design elements were added only to enhance the functionality of the dress as clothing for a special occasion. Pet. App. 5a. The Second Circuit concluded that, in the case of the 154416 Dress, the aesthetic had merged with the functional, and, therefore, it did not meet the

6 established test for conceptual separability. Pet. App. 5a. Accordingly, it held that the 154416 Dress is not copyrightable. REASONS FOR DENYING THE PETITION Contrary to the assertions of petitioner, there is no conflict among the circuit courts as to the law with respect to the copyrightability of the design elements of useful articles. The circuit courts uniformly recognize that the design elements of useful articles are not copyrightable unless it is established that they are physically or conceptually separable from the useful article. Application of this accepted legal principal is best left to a district court which may utilize any of several tests to determine separability depending upon the type of useful article at issue and the nature of the design elements for which copyright is sought. Here, the district court considered the copyrightability of the design elements of the 154416 Dress under no less than six distinct tests and correctly concluded that under no test were they entitled to copyright. A. There Is No Conflict Among The Circuit Courts. It is well settled that articles of clothing are useful articles not protected by the Copyright Act. 17 U.S.C. 101; Whimsicality, Inc. v. Rubies Costume Co., 891 F.2d 452, 455 (2d Cir. 1989) (citing Fashion Originators Guild of America v. FTC, 114 F.2d 80, 84 (2d Cir. 1940) (L. Hand, J.), affd, 312 U.S. 457 (1941)). As the House Judiciary Committee Report accompanying the Copyright Act of 1976 unequivocally states: Ladies dresses . . . would not

7 be copyrighted under the bill. 1476, at 55 (1976). H.R. Rep. No. 94-

Notwithstanding this, Jovani claims copyright protection in individual elements of a prom dress, invoking the Copyright Acts limited exception to its general bar on copyright protection for useful articles. Section 101 of the Copyright Act states in pertinent part: . . . 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 pictoral, 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. According to the legislative history of this provision, separability may occur either physically or conceptually. See H.R. Rep. No. 941476, at 55 (1976). As the Seventh Circuit has noted, the circuit courts have been unanimous in their interpretation of this provision of Section 101 of the Copyright Act as requiring either physical or conceptual separability to obtain copyright on a design element of a useful article. Pivot Point Intl, Inc. v. Charlene Products, Inc., 372 F.3d 913, 922 n.8 (7th Cir. 2004). In short, there is no split among the circuit courts as to the law. The petition attempts to manufacture a split among the circuit courts by pointing to the variety of tests that have been developed to determine whether physical or conceptual separability exist.

8 Pet. 22-26. The fact, however, that multiple tests have evolved for the determination as to whether physical or conceptual separability is sufficient to allow copyright in the context of a specific useful article does not reflect a split in the circuit courts. As the Seventh Circuit has noted, each of these tests evolved to address different types of useful articles. Pivot Point Intl, 372 F.3d at 930 (Each of these cases differs in the object at issue . . . .). Thus, for example, the Fifth Circuit has adopted the so-called likelihood-of-marketability test as the standard for determining whether a design element of an article of clothing is physically or conceptually separable. Galiano v. Harrahs Operating Co., Inc., 416 F.3d 411, 421 (5th Cir. 2005). But the Fifth Circuit has cautioned that this test only applies in the context of clothing and that a different test may well apply in the context of a different type of useful article. Id. This approach by the circuit courts different tests for different types of useful articles is entirely appropriate and does not reflect a disagreement among the courts of appeal. Quite simply, there is an extraordinarily broad range of useful articles with design features for which copyright might be sought. It is neither possible nor desirable to set a single test that would be appropriate across this entire range of useful articles. As the circuit courts have demonstrated, different separability tests are appropriate in different contexts. The mistake made by the petition is to view these distinctions as a split among the circuit courts as opposed to what they really are an entirely appropriate response to the diverse range of useful articles that have sought copyright protection for individual design elements

9 incorporated therein. Compare Brandir Intl, Inc. v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (copyrightability of bicycle rack) with Superior Form Builders v. Dan Chase Taxidermy Supply Co., 74 F.3d 488 (4th Cir. 1996) (copyrightability of mammal taxidermy mannequins) with Galiano v. Harrahs Operating Co., Inc., 416 F.3d 411 (5th Cir. 2005) (copyrightability of casino uniforms). B. The District Court Found The Constituent Elements Of The Prom Dress At Issue Not To Be Copyrightable Under Any Test. The district court acknowledged that no fewer than six tests have been suggested to determine whether conceptual separability existed in different types of useful articles. Pet. App. 16a. The district court then proceeded to consider the copyrightability of the constituent elements of Jovanis 154416 Dress under each of those tests. The district court concluded that none of the various tests for conceptual separability protect the elements of the dress, either individually or as a group. Pet. App. 21a. Given that the district court has already considered and rejected the copyrightability of the elements of the 154416 Dress under any of the various tests, review by this Court is unwarranted. Even if this Court was to find that only one of the several tests must be used to determine separability, such a decision would not affect the judgment below. In this sense, the petition inappropriately seeks an advisory opinion because the judgment of the district court would not be changed by this Courts decision. See, e.g., Herb v. Pitcairn, 324 U.S. 117, 125-126

10 (1945). The fact that the district court has already rejected the copyrightability of the 154416 Dress under any test makes this case an unsuitable vehicle for reviewing the question presented. CONCLUSION For the foregoing reasons, the petition for a writ of certiorari should be denied. Respectfully submitted, TERENCE P. ROSS Counsel of Record CROWELL & MORING LLP 1001 Pennsylvania Ave., NW Washington, DC 20004-2595 (202) 624-2500 tross@crowell.com Attorneys for Respondent Fiesta Fashion