Fashion v. Cinderella Divine, Inc.

• Decision Date: 07 July 2011
• Docket Number: No. 10 Civ. 7085(JGK).,10 Civ. 7085(JGK).
• Citation: 808 F.Supp.2d 542,2011 Copr.L.Dec. P 30104,100 U.S.P.Q.2d 1381
• Parties: JOVANI FASHION, LTD., Plaintiff, v. CINDERELLA DIVINE, INC., et al., Defendants.
• Court: U.S. District Court — Southern District of New York

100 U.S.P.Q.2d 1381

2011 Copr.L.Dec. P 30,104

808 F.Supp.2d 542

JOVANI FASHION, LTD., Plaintiff,

v.CINDERELLA DIVINE, INC., et al., Defendants.

No. 10 Civ. 7085(JGK).

United States District Court, S.D. New York.

July 7, 2011.

Andrew Arash Anissi, Joseph Sofer, Robert M. Haroun, Sofer & Haroun, LLP, New York, NY, for Plaintiff.

Jed Richard Schlacter, Schlacter & Associates, Anthony Galano, III, Christopher Matthew Pisacane, Ellenoff Grossman & Schole LLP, Jed Richard Schlacter, Schlacter & Associates, Michelle Mancino Marsh, Kenyon & Kenyon, Jonathan J. Anastasia, Crowell & Moring LLP, New York, NY, David Prisyon Beitchman, pro hac vice, Todd Evan Chvat, pro hac vice, Encino, CA, Terence P. Ross, Crowell & Moring LLP, Washington, DC, for Defendants.

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.

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 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.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 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 are undisputed, unless otherwise indicated.

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 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. (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 two-dimensional images of dresses in catalogs, rather than any full, three-dimensional dress design, and that, in any event, nothing about the allegedly infringed dress is copyrightable. Accordingly, Fiesta argues, Jovani's complaint should be dismissed pursuant to Rule 12(b)(6). Fiesta's motion specifically discusses the aspects of dress style # 154416 that Jovani claims are copyrightable.

Unique raises the same arguments as Fiesta, with two 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 three-dimensional 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 three-dimensional work” itself. U.S. Copyright Office, Copyright Registration for Works of the Visual Arts 4, Circular 40, Nov. 2010 (emphasis added). Fiesta accurately points out that the registrations themselves identify the work created as two-dimensional 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...