Forbes: Protecting Fashion Designs

January 3, 2013

By Oliver Herzfeld

On September 20, 2012, the Senate Committee on the Judiciary voted for the Innovative Design Protection Act of 2012 (a.k.a. the “Fashion Bill”) to proceed to the Senate floor without amendment, and on December 20, the bill was placed on the Senate legislative calendar. The Fashion Bill extends copyright protection for three years to fashion designs that “(i) are the result of a designer’s own creative endeavor; and (ii) provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.”

Proponents of the law, including major fashion houses, claim it would provide more protection for fashion designers by closing existing gaps in US copyright law. In particular, it would prohibit copying the appearance of articles of apparel, including ornamentation, original elements and original arrangement or placement of both original and non-original elements. Opponents argue the bill would (i) chill creativity to the extent that new works often borrow and build upon what has come before, (ii) increase independent fashion designers’ legal costs, due to required consultations with lawyers to reduce the likelihood of infringement claims, as well as representation for actual infringement disputes, and (iii) indirectly, increase the cost of apparel and accessories for all consumers. It has also been suggested by some that fashion designs are afforded ample protection under existing US intellectual property laws. The proposed law provides a good opportunity to review the existing US laws relating to the protection of fashion designs.

Copyright

Copyright law protects original prints and patterns, unique color arrangements and novel combinations of elements (protectable or non-protectable) used on apparel and accessories but, in most cases, not fashion designs themselves. The one exception under the US Copyright Act is that a fashion design may be protectable “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.” Courts have established that the test for separability may be met by showing either physical or conceptual separability. A design element is considered physically separable when it can be removed from an article of apparel and sold separately (e.g., a belt buckle), and conceptually separable when it comprises artistic features that do not contribute to the utilitarian aspect of the apparel and such features invoke an idea separate from the functionality of the apparel (e.g., a Halloween costume).

Design Patents

A design patent provides 14 years of exclusive industrial design rights for new and nonobvious ornamental designs of functional items. The USPTO examination process for design patents used to take over a year, which would often exceed the life expectancy or actual lifespan of many designs in the rapidly changing world of fashion. However, the USPTO has recently exerted efforts to improve and streamline its review procedure, so a design patent can now be obtained in approximately 10 to 12 months, and with certain expediting methods at additional cost (e.g., filing a petition to expedite with the USPTO or pursuing the USPTO’s extra-expedited “rocket docket” procedure), in as few as six months.

Trademark and Trade Dress

The US Trademark Act does not provide protection for fashion designs per se. Instead, trademark law protects brand names, logos, symbols, designs and other optional elements of apparel and accessories, and trade dress law protects the design, packaging or appearance of apparel and accessories, solely to the extent they identify the source and origin of such products. For example, the brand name and logo hang tag and distinctive pocket stitching on a pair of jeans could be registered as protectable trademarks, and the unique shape of a dress could be registered as protectable trade dress. In that vein, a federal court of appeals recently ruled that Christian Louboutin owns trademarks rights in his distinctive red outsoles since they identify him as the sole legitimate source of his shoes, while Yves Saint Laurent and other parties retain the right to produce and sell monochromatic red shoes (where both the outsoles and uppers are entirely red). To be clear, elements that do not identify source and origin of apparel and accessories do not qualify for protection under the US Trademark Act.

Unlike packaging and other elements where trade dress protection may be acquired through “inherent distinctiveness,” trade dress protection of an apparel design requires distinctiveness to be acquired through “secondary meaning,” a process whereby consumers come to recognize the design as a source identifier over a period of time. In this respect, design patents can work well together with trade dress rights. In particular, a designer may first seek and secure a design patent and then secondary meaning for trade dress protection of the design can be developed during the 14 years of design patent protection.

What Should Fashion Designers Do?

Based on existing US laws, fashion designers should seek to maximize their protection by (i) federally registering copyrights for their original prints and patterns, unique color arrangements and novel combinations of elements, as well as their protectable design elements to the extent physically or conceptually separable from the functional aspects of the subject apparel or accessories, (ii) applying for a design patent for new and nonobvious ornamental fashion designs when the useful life of the design is expected to last more than a few seasons, and (iii) federally registering for trademark and/or trade dress protection for brand names, logos, designs, packaging and other elements of apparel and accessories to the extent they identify the source and origin of such products. If the Fashion Bill is enacted into law, designers would be well-advised to continue pursuing the foregoing copyright and trademark registrations, but would have to reconsider pursuing design patents based on cost considerations and whether the useful life of each relevant design is expected to last more than the three years of copyright protection provided by the Fashion Bill.