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Copyright Protection for Fashion Designs

May 11, 2012 - Posted by: - In category: Law Bytes - No responses

By Bianca Francisca Hoogkamer*

Introduction

Clothing designers spend considerable time and effort creating fashion designs. Copy houses, like Forever 21 and Primark, produce knockoffs and sell them at affordable prices, sometimes before the designer is able to deliver the articles to the stores. Recently, Senator Charles Schumer of the district of New York introduced a bill that protects fashion designs. The Innovative Design Protection Act (hereinafter “IDPA”)1 provides copyright protection to fashion designs. The bill amends Section 13 of the Copyright Act and adds “fashion design” as a type of design that is protected. The IDPA offers thinner protection than all of its predecessors. The bill contains some experimental provisions, which should discourage litigation. In other aspects it is tailored in conformance with legislation in Europe, for instance the short term of protection. Legislation for protection of fashion designs has been considered successful in Europe. Is this kind of legislation suitable for the United States and will it likely be successful?

There are two kinds of copying in fashion. Fashion houses such as H&M and Zara that create derivative works, and copy houses such as Forever 21 that create close copies or knockoffs. The sole business strategy of Forever 21 is to copy designers. The company has been in over 50 disputes involving copying of fashion designs. Forever 21 is known for making almost exact copies of designer apparel. Most cases do not go to trial; they are settled. Copyright in the European Union extends to fashion designs. Fashion houses must conceive their own interpretations of the fashion designs they copy, hence they manufacture and sell derivative works. These fashion houses have in-house designers who also design their own collections, as opposed to Forever 21, which only employs “copy” designers.

The result is that copy houses are likely to steal profits from designers. Copying does not only result in a potential loss of revenue for the designers, but it can also result in dilution of the fashion designs and injury to the designer’s reputation.2

Senator Schumer introduced the IDPA to solve these issues. Previous attempts to include fashion designs in copyright protection failed. What attempts have been made to protect fashion designs? Is it desirable to protect fashion designs? What are the effects of protection? Are there any differences in protection of fashion designs between the United States and foreign countries?

A. Fashion protection in the United States

What is the current status of copyright protection for fashion designs? At this time the United States Copyright Office will deny protection to fashion designs.3 The reason for denying copyright protection is that fashion designs are considered useful articles. The Copyright 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.”4 Section 101 of the Copyright Act states that the design of a useful article is considered copyrightable “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.”5 The aesthetic features must be inseparable from the utilitarian function. Separability can be physical or conceptual.6 The first occurs when the functional part of the item can be physically separated from the artistic part;7 the latter takes place when “there is a 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.”8

For copyright purposes, a distinction can be made between a design that “graphically sets forth the shape style, cut and dimensions for converting fabric into a finished dress or other clothing garment,”9and a pattern. A pattern can be a design printed on a t-shirt or it can be depicted throughout a dress. Fabric patterns are copyrightable.10 Finally there are sewing patterns. Sewing patterns, i.e., the drawings are protectable as a work of art but the garment that people create by using the pattern is not protected. Copyright law does not protect ideas, processes or methods. In Adelman, Inc. v. Sonners & Gordon, Inc.,11 the court found that “it follows that plaintiff’s copyright gives it the exclusive right to make copies or reprints of the drawing only, and that it gives the copyright owner no monopoly of the article illustrated.”12 Patterns that are depicted on clothing articles are protected as pictorial, graphic, and sculptural work.13 A fabric pattern can exist independently and be can identified separately; a finished dress or other garment likely not.14 In L.A. Printex Indus., Inc. v. Aeropostale, Inc.15 the Ninth Circuit stated that even though fabric designs contain non-protectable elements, the design could still constitute a protectable expression as a whole. L.A. Printex is a fabric printing company that designed a floral pattern and registered it at the Copyright Office. Aeropostale sells shirts depicting a floral design, which is allegedly similar to the registered pattern. The design consists of a repeating pattern of bouquets of flowers and three-leaf branches. This idea is not protectable, but the “original selection, coordination, and arrangement of unprotectible elements may be protectable expression.”16 The court also stated that due to the wide range of options for selecting, coordinating, and arranging the floral elements in a fabric design, the protection is broad. Broad protection means that the copied pattern does not have to be virtually identical to the original pattern, as opposed to thin protection.

Courts evaluate costumes different than other kinds of apparel. The District Court for the Southern District of California required that “the features only need to be conceptually separable from the utilitarian functions of the garments to be entitled to protection under copyright law.”17 More recently, the District Court for the Southern District of Indiana confirmed that costumes are useful articles, because Section 101 only requires “an intrinsic utilitarian function.”18 Therefore, costumes must meet the separability test. The court found that the costume has “some particularized expression, and will recognize the copyright protection that this creative expression justifies.”19

The Copyright Office has determined that clothing designs cannot be registered for copyright protection.20 There are other intellectual property rights a fashion designer may rely on, but for various reasons other areas of intellectual property are not suitable for protection of fashion designs.21

B. Is protection of fashion desirable?

In the past, copying of fashion designs might have been more “fair” to the original designers. They were still ahead of the competition, because the copying of the designs usually started when their original designs were already sold at stores. The original designer conceived a fashion design, the design was being manufactured and delivered to the stores. Then copy houses started to produce knockoffs. Due to digital technologies, the Internet and low cost countries, like Bangladesh and Vietnam, this scheme has changed. Photographs at runway shows are immediately posted online. Copy houses retrieve these photographs and send them to factories in low cost countries. The designs will be copied and shipped to the stores of the copy houses, sometimes before the original designer can produce and sell the design.22

Both proponents and opponents of copyright protection for fashion agree that fashion designs are being copied on a large scale. Both sides commonly accept that designers should be free to conceive derivative works or follow a trend. They do not agree on the effects of producing knockoffs.  Does this kind of copying hurts or helps the fashion industry?

  1. Arguments in favor of protecting fashion designs.

In the European Union and Japan fanciful clothing is protected by intellectual property laws.23Fashion designs in France, for instance, are given automatic protection on the date of creation.24

Many designers and design associations want the same kind of protection in the United States.    Fashion designs are not protected, because they are utilitarian articles. Proponents of protection argue that these designs are a form of artistic expression and thus deserve the same protection as, for instance, music and literature. Clothing designs are not just useful articles, but the result of creative choices made by the designer. The reason people buy fashion is not merely about need. People buy clothing for all kind of reasons. They communicate through fashion and express their personality through fashion.25 Even if a work of art is captured in a useful article, it still can be artful and unique.26 Some people buy clothing, because they want to be “trendy” and wear the latest styles. Hemphill and Suk argue that people “want to be part of a trend, but not be a replica of others who join the trend.”27 Stripes might be the seasonal trend, but some people like striped dresses, while others like striped scarfs.

Proponents of protection argue that although copying is part of the fashion market it is not the driving force behind the creation of new designs.28 They are of the opinion that trends, seasonal changes and most importantly, creative expression drives fashion. Professor Susan Scadafi29 and Hemphill and Suk recommend that designers should only receive protection for close copies instead of protecting trends. This is in accordance with the proposed IDPA bill. This bill only protects designs, which “includes original elements of apparel.”30 Because of this requirement, trends are not being protected by the IDPA.

Advocates of the bill claim that due to copying of designs there is a loss of revenue for the original designers. First, there are low-end stores who copy high-end design labels. In this scenario there is a risk of lost revenue, and there might be reputational damage or dilution. Customers who wish to buy items of the high-end designers might be attracted to buy a knockoff instead of the original piece. They could consider buying the expensive original piece. Or they could buy a knockoff and spend the “saved” money on other things, and thus depriving the original designer from income.

Second, there is a risk of revenue loss when a high-end design label copies another high-end design label. This happened when Ralph Lauren copied the “tuxedo dress” of Yves Saint Laurent.31

Finally, Hemphill and Suk are of the opinion that there is also a risk of revenue loss when a low-end copy house copies a middle-range designer. Middle-range labels sell their clothing for a few hundred dollars instead of a tenth of that price, which copies usually cost. Hemphill and Suk claim this is in the reach of the customers who buy the copies.32 This might be true for some customers, but not for most of them. A lot of people who shop at copy houses cannot afford hundreds of dollars for one clothing item or they are unwilling to pay that amount for fashion designs. There is of course the risk that customers of the mid-range designers are attracted to buy a cheaper knockoff and in this way deprive the mid-range designer of revenue.

There is a risk of dilution and damage to the uniqueness of a fashion design. Dilution is a concept that exists in trademark law. There are two kinds of dilution, namely dilution by blurring and dilution bytarnishment. The first is the association that arises “from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark” 33 Apparel is not inherently distinctive, and this kind of dilution will not likely occur. The latter is the association that arises “from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark.”34  A well-known design can lose its uniqueness and its reputation due to multiple cheap copies.

A design will become diluted if copy houses copy a design at a lower quality and sell it at a lower price. The copy houses can produce and ship the articles in weeks to their stores. Fashion designers usually need a few months to deliver the articles. When the original article is being sold, many people already have bought a cheap copy or seen the design in low-end stores. This makes the original piece less attractive to buy. People associate it with the “cheap” store or people of lower “class” who buy at these copy houses; hence the original article is diluted.35 Trademark dilution protects famous marks. It is not about “the source signaling function,” trademark dilution law protects “from an appropriation of or free riding on the investment.”36 If a copy house produces a knockoff of a well known or must-have item it is free riding on the investment of the original designers.  The copy house does not have to invest in research or spend time and effort in designing their own pieces of apparel. Moreover, it does not bear the risk of designing unsuccessful pieces.

Copyright dilution is not an accepted concept in copyright law, although the concept is discussed in relation to copyright in the digital age.37 The risk of dilution of fashion designs is certainly an incentive to grant copyright protection to fashion designs.

  1. Arguments against protection of fashion designs.

Opponents of the bill argue that protection for fashion designs could hurt the fashion market. According to Raustiala and Sprigman,38 copying drives the creation of trends, which boost the growth in sales in the entire industry. They call this the piracy paradox. They argue that copiers establish a trend and the trend is what is being sold.39 Hemphill and Suk note that it is important to make a distinction between trends and close copies.40 Raustiala and Sprigman are of the opinion that the differences are overstated; they say that all copying is beneficial to the fashion industry.41 They point at the currently very innovative and creative and profitable fashion market, whilst there is no protection. It appears that there is not a real problem; the fashion industry is a flourishing market. Introducing more laws can increase the costs in the entire market. Opponents argue that legislation will lead to numerous lawsuits, which can eventually lead to higher prices for apparel. Moreover, many starting and established designers have fewer resources to hire an attorney or defend themselves in infringement claims. It could also be more difficult to enter the currently very approachable market.

Empirical evidence in Europe reveals that after the introduction of protection to fashion designs, there was no significant increase in lawsuits.42 Although similar legislation does not indicate that there is a likelihood of more lawsuits, Professor Sprigman is of the opinion that laws that protect fashion design will change the focus of the industry on innovation, into litigation.43 He acknowledged that empirical evidence shows that fashion designers in the European Union did not file numerous lawsuits after their designs were awarded protection, but he attributes this to the difference in the legal systems. There is a big difference in the litigation environment between the two continents. “Unlike most countries in Europe, which have relatively weak civil litigation systems, we Americans are, for better or worse, accustomed to resolving disputes through the courts.” 44 In the United States plaintiffs and attorneys are more eager to file civil suits. This can harm the fashion industry in relation to costs, accessibility and creativeness, due to a focus on litigation. Additionally, legislation in Europe was intended to discourage copying rather than an incitement to sue.45 The lack of lawsuits in the European Union can be considered a result of the litigation environment. Therefore, comparing the United States with the European Union will not refute the argument that protection will increase lawsuits. Designers and lawyers will likely use this bill to file more lawsuits or as a threat to sue, which is not beneficial for the thriving fashion industry.

On the other hand, there is a different element that might decrease the number of lawsuits. When legislation prevents copying, copy houses will probably change their business model, because of the fear of lawsuits.46 They will only change their behavior when there is a risk of being sued and losing the suit. They might start designing derivative works or design their own collection, like the European designers H&M and Zara.47 Due to explicit protection copy houses are more likely to get sued and to lose those suits. Suddenly, copying is a much less attractive activity.48 There will probably be less infringements in the first place; hence fewer lawsuits.

After legislation for fashion designs was introduced in Europe, most lawsuits that emerged involved copy houses being sued.49 At this moment, designers in the United States sue copy houses, like Forever 21. Introducing legislation, like the IDPA, is aimed at targeting copy houses that produce knockoffs. Although many cases are being settled, the few that did reach court did not end in favor of the plaintiff designers. At this point, there is no legal basis or precedent to grant protection to fashion designs. The IDPA bill can resolve this issue, by granting protection to fashion designs and providing an instrument to battle infringements.

C. Comparison to foreign countries

  1. The European Union

The European Union adopted the European Directive on the Legal Protection of Designs in 1998.50 This directive created design rights. A design must be new and have an individual character to be protected. A design is considered new if “no identical designs have been made available to the public before the filing of the application for registration.”51 A design has an individual character if the “overall impression ” on the “informed user differs from the overall impression” of any design previously made available to the public.52 In 2002, the European Union Council adopted rules that provide additional rights for designs, namely the European Regulation on Community Designs.53 There are two kinds of protection for fashion designs anchored in this Directive. First, there is the registered design protection, which confers “its holder the exclusive right to use it and to prevent any third party not having his consent from using it,” 54 even when another design is created independently. The protection is five years from the date of the filing of the application and is renewable for a maximum of 25 years.55 Second, there is protection for unregistered designs. These designs are protected starting the date when they were made available to the public in the European Union.56 The term of protection is three years. This protection is a useful instrument for small starting designers who do not have the resources to register all their designs. The European design rights protect the overall appearance of an article, “resulting from the features of, in particular the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.”57 The scope of protection under the Directive “shall include any design, which does not produce on the informed user a different overall impression.”58 The unregistered design protection only prevents the commercial use of the design and only if the use results from copying.59 When two designers create the same design independently, they cannot claim protection.60

Although there have not been numerous lawsuits, some lawsuits were filed since the enactment of the 2002 Regulation. For example, Jimmy Choo sued Towerstone alleging that it copied a bag that Choohad registered as a community design. The court found that an informed user, not just a “woman in the street” would see the bags as exactly the same.61

  1. France

The French have a broad system of copyright protection. According to the French Intellectual Property Code, any original work expressed in any form may be copyrighted.62 The Code also provides a non-exhaustive list of works that are afforded copyright protection. Fashion shows and designs are included in this list.63 The protection of fashion designs in France goes back to the Copyright Act of 1793.64 Original fashion designs are automatically protected from the day of creation. Although France has broad protection there are not many lawsuits involving copyright infringement on fashion designs. A few French designers filed suits against American designers using the French system.65 The French designer Yves Saint Laurent successfully sued Ralph Lauren for copying a tuxedo dress.66

  1. United Kingdom

Fashion designs are protected by copyright in the United Kingdom. 67  Both registered and unregistered designs are protected. A design is the “design of any aspect of the shape or configuration (whether internal or external) of the whole or part of an article.”68 The term of protection is “fifteen years from the end of the calendar year in which the design was first recorded in design documents or an article was first made to the design, whichever first occurred.”69 When an alleged infringer raises a defense that the infringement was innocent, the infringer will not be held liable.70

In the United Kingdom, there have been several lawsuits regarding copyright infringement on fashion designs. Due to legislation some fashion designers have started lawsuits against other designers who copied them.71 Primark and Topshop are two lower-end stores that are known for copying fashion designs in the United Kingdom. Most cases in the United Kingdom do not involve designer labels, but high-end chains suing low-end chains. For example, Monsoon sued Primark, alleging that it had copied a top and a butterfly skirt. Primark admitted that it had copied the articles and paid £23,000 in an out of court settlement. A year later Monsoon again accused Primark of copying articles. Primark pulled the articles back. The conflicts in the United Kingdom are usually settled out of court.

There is one remarkable situation where a designer label did not take any action, while it was obviously being copied. Balenciaga, a Spanish label, had a navy blazer with yellow piping in its collection. This was a popular item in the United Kingdom and the blazer was copied regularly. Balenciaga did not sue any of the copiers. A possible reason is that their jackets have fine details and are beautifully tailored. They cost much more than the knockoff, but they are also much more sophisticated. The label was not damaged by the knockoffs, because there was still a waitlist to buy the Balenciaga blazer.72 This indicates that people will still buy the original design, even when a knockoff is available.

D. Legislative history

Members of the Council of Fashion Designers of America (hereinafter “CFDA”) spoke with Senators in Washington about the importance of focusing on design piracy. Hereafter, fashion design legislation was drafted and introduced. The Design Piracy Prohibition Act (hereinafter “DPPA”) was introduced in 2006.73 It was stalled in committee hearings. The DPPA was reintroduced in the Senate in 2007 and the House in 2009.74 The bills stalled again, as the American Apparel and Footwear Association (hereinafter “AAFA”) lobbied against it. The AAFA argued that the bill would only encourage frivolous lawsuits against its members and place burdens on its members. Moreover, the registration requirement was likely to cause secondary liability. There was fear that third parties, like manufacturers, would require a new design to be cleared before agreeing to produce it.75 The bill was further revised and a new version, the Innovative, Design Protection and Privacy Prevention Act (hereinafter: “IDPPA”) was introduced in 2010.76 The final version was introduced in 2011.77 Unlike its predecessors the IDPPA has the support of the two major trade associations, the AAFA and the CFDA.

The IDPPA bill differs notably in several aspects from its predecessors. Senator Charles Schumer of the District of New York introduced various new features. The registration requirement and the secondary liability provisions were removed. The bill places responsibility on the designers and obliges them to conceive designs with specific creative elements that meet the strict criteria set forth in the bill.78 The threshold for what is original is very high. The bill does not prohibit designers from using a protected design as the basis of inspiration for their own designs. The House Subcommittee on Intellectual Property, Competition, and the Internet has not proceeded to advance the legislation. This might not happen at all, because on September 20, an improved bill was introduced, the IDPA.

E. The IDPA

  1. Proposed legislation

The fashion industry has long pressed for an amendment to the Copyright Act or for sui generis protection. Senator Charles Schumer introduced the IDPA on September 10, 2012.79 The bill offers 3 years protection, instead of the regular copyright term of life of the author plus 70 years. The three-year term reflects the fashion industry’s quick changes. The protection is also thinner than regular copyright protection. The copy must be “substantially identical” as opposed to “substantially similar.” The article must be “so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.”80 The bill is slightly different than its predecessor the IDPPA. First, a person or company is required to give notice to a potential infringer and wait 21 days before filing suit. Second, the damages and profits will only accrue after 21 days. This measure would counter the risk of bullies sending cease and desist notices to fashion designers that might not infringe, before they file suit. They might not even intend to file an actual lawsuit, but only want to deter the alleged infringing designer. The IDPA still exempts third parties, like Internet services providers and search tools, from liability. The IDPA only protects unique, distinguishable, non-trivial, and non-utilitarian designs. The Senate Judiciary Committee was favorable to the bill and the bill is now on the Senate’s Legislative calendar. The bill contains an independent creation exemption and a home sewing exemption.81 The sewing exception allows people to make a copy of a fashion design for personal use of for a family member. The articles may not be offered for sale. The IDPA strikes a balance in protecting unique and original designs, while ensuring that there will not be numerous trivial lawsuits

  1. Effect and success

Proponents argue that the legislation will make the industry much more creative and innovative. Hemphill and Suk, on the other hand, argue there is reciprocity between reduced profits and the amount of innovation, which is “a standard result of economic theory.”82 They also say that designers “see a disproportionate effect on their profitability, and hence are discouraged from innovating —indeed, from entering in the first place.”83 This statement does not seem to be in conformance with the current situation. The fashion industry is a very profitable, multi-billion dollar industry. When compared to the European Union it cannot be said that because designers in the United States do not have protection, they are less innovative or profitable or that starting designers are actually reluctant to enter the United States fashion market.

The bill is an important tool for small designers who wish to defend their rights. Forever 21 also copies these small designers, like Trovota. Empirical evidence shows that they are willing to take action and defend their rights.84 This refutes the opponents’ arguments that small designers do not have the means to benefit from the bill. Small designers will only sue if they expect that the courts rule in their favor; the IDPA can facilitate that.

When legislation was introduced in Europe it did not have a huge effect on the fashion market. The fashion market did not significantly change and there were not significantly more lawsuits filed than prior to the legislation. One possible explanation is the difference of the legal environment between the two continents. It is much more common to resolve your issues in court in the United States. Due to the “loser pays” principle in Europe, there is a bigger risk of ending up not only losing the lawsuit, but also paying the actual legal costs of the winning party. At this point copy houses are already being sued in the United States. The IDPA aims at protecting fashion designers from these copy houses. Due to legislation the original designers are more likely to win these lawsuits.

There is a possibility of a decrease in lawsuits, due to legislation. European copy houses are more reluctant to sell knockoffs because there is a risk they will be sued and will end up losing the lawsuit. They will more likely design derivative works, which are still allowed by the European legislation or create their own original designs. Copy houses in the United States might also adopt this business model. Under United States law they are allowed to produce knockoffs and sell the articles under their label at a much lower price. Designers do not have any rights to combat this behavior. The IDPA will give them an instrument to fight these copiers. Due to the legislation, the copy houses will probably have to change their business models. They will have to employ “real’ designers who design articles that are inspired by the runways and other designers, but that are not close copies. The bill is supposed to discourage copiers instead of providing an incentive to sue. Therefore, it is not certain if there will be an increase in lawsuits, because of the “eager to sue” litigious environment in the United States or that this is leveled out by a decrease in lawsuits due to a change in the copy houses’ business models.

Besides having a direct economic effect copying can also affect the luxury or uniqueness of a product. When designs are being protected by copyright, the designers have a tool to protect their designs against dilution. This is a huge benefit for designers.

Opponents argue that legislation will hurt the fashion industry because it thrives on copying. Most designs are in some way inspired or influenced by other designs or designers, but there is no excuse to make exact or close copies. This is not fair to the original designer and can dilute their designs. Trends that were “it” in the eighties inspire other designers again years later. The industry thrives on inspiration and borrowing, not blatant copying.

The thin protection, which the IDPA offers strikes the right balance between the disparate parties and rights involved. The short term respects the fashion market’s quick changes. The IDPA only applies to close copies, due to the substantially identical test. The narrow tailoring of the bill lessens the risk of numerous and frivolous lawsuits. New rules on damages and profits protect mostly small designers who have less funds to defend themselves against bigger parties that might bully them with cease and desist letters, and should prevent the filing of numerous and frivolous lawsuits.

* Bianca Hoogkamer graduated from the University of Amsterdam. She holds a Masters Degree in Information Law.

The author would like to express her sincere appreciation to Richard Greenstone for his excellent advice, and for editing this article.

 

  1. S. 3523, 112th Cong. (2012).
  2. See Erika Myers, Justice in Fashion: Cheap Chic and the Intellectual Property Equilibrium in the United Kingdom and the United States, 37 AIPLA Q.J. 47, 68 (2009).
  3. See Registrability of Costume Designs, Policy Decision, 56 Fed. Reg. 56, 530 (1991).
  4. 17 U.S.C. § 101 (1976).
  5. Id. § 101.
  6. Courtney Daniels, Made in America: is the IDPPPA the Answer to the United States Fashion Industry’s Quest for Design Protection? 20 U. Miami Bus. L. Rev. 113, 116 (2011);
  7. 17 U.S.C. §101 (1976)
  8. M. & D. Nimmer, Nimmer on Copyright, § 2.08[B][3] 2-101 (2010)
  9. Id. § 2.08[H][3] 2-145 (2010)
  10. See Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., 169 F. Supp. 142, 143 (S.D.N.Y. 1959)
  11. 112 F.Supp. 187 (S.D.N.Y. 1934)
  12. Id. at 188.
  13. 17 U.S.C. § 113 (1976)
  14. See Morris v. Buffalo Chips Bootery, Inc., 160 F. Supp. 2d 718, 721 (S.D.N.Y. 2001).
  15. 676 F3d 841 (9th Cir. 2012).
  16. Id. at 850.
  17. Nat’l Theme Prods., Inc. v. Jerry B. Beck, Inc., 696 F. Supp. 1348, 1353 (S.D. Cal. 1988)
  18. Celebration Int’l v. Chosum Int’l, Inc., 234 F. Supp. 2d 905, 913 (S.D. Ind. 2002)
  19. Id. at 918.
  20. See Registrability of Costume Designs, Policy Decision, 56 Fed. Reg. 56, 530 (1991).
  21. Trademark law protects distinctive words, logos or symbols. A designer can protect its name and logo, but not the articles it created. Logos provide strong protection for the trademark holder. This protection is favorable to designs that depict a logo, like Louis Vuitton bags. In the case of counterfeiting, trademark law can be a useful tool. Patent law can also protect fashion designs. Lulumon has registered three patent designs for yoga pants. See U.S. Patent No. D645, 644, D661,872 and D662,281.The Court for the Southern District of New York found that “a design patent must be the product of “invention,” by which we meant the same exceptional talent that is required for a mechanical patent.” White v. Lombardy Dresses, 40 F. Supp. 548, 550 (1941). Although designs can be patented, fashion designs usually do not pass the tests of novelty and non-obviousness. Moreover, the USPTO usually denies design patent protection, because most designs are functional. Design patents are not suitable for protecting fashion designs. The process of obtaining a patent can take a long time and is very expensive and the protection exceeds the lifetime of the seasonal fashion cycles. Trade dress protects the overall appearance of a product, which includes features like size, shape, color or color combinations and texture. See John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966, 980 (11th Cir. 1981). Over the years trade dress is extended to encompass “a combination of any elements in which a product or service is presented to the buyer.” J. Thomas Mccarthy, Mccarthy on Trademarsk and Unfair Competition § 8-1 (2010). The Supreme Court recognized that trade dress can apply to fashion designs. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000). This case involved an alleged trade dress infringement on a design conceived by Samara Brothers. Samara Brothers is a designer and manufacturer of clothing for children. Wal-Mart sells, among other things children’s clothing. Wal-Mart delivered photos of Samara Brothers’ seersuckers designs to a supplier, which manufactured seersuckers based on those designs. The seersuckers only had “minor modifications,” compared to the seersuckers design of Samara Brothers. Id. at 208. Samara Brothers filed suit and argued that the seersuckers were knockoffs that were infringing their unregistered trade dress. The court found that “a product’s design is distinctive, and therefore protectable, only upon a showing of secondary meaning.” Id.at 216. Section 43(a) of the Lanham Act can also apply to the design of the product and not only a product’s packaging. However, product design trade dress, like color, is never inherently distinctive. Consumers know that even unusual product designs are not intended to identify the source, but to make the product more useful or appealing. Id. at 213.The product design must therefore acquire distinctiveness by the consuming public or secondary meaning. Many fashion designs will not be awarded trade dress protection; the burden of proving secondary meaning is very high. Kevin V. Tu, Counterfeit Fashion: 18 Texas Intell. Prop. L.J. 419, 435 (2010) “Though intentional copying constitutes persuasive evidence of consumer recognition, conscious replication alone does not establish secondary meaning. Coach Leatherware Co. v. Ann Taylor, Inc., 933 F.2d 162, 170 (2d Cir. 1991). A consumer awareness survey held by a plaintiff was not sufficient evidence to show that the overall design of a handbag acquired secondary meaning, through association by the public. Id. at 170.
  22. Aya Eguchit, Curtailing Copycat Couture: The Merits of the Innovative Design Protection and Piracy Prevention Act and a Licensing Scheme for the Fashion Industry, 97 Cornell L. Rev. 131, 143 (2011-2012).
  23. See e.g., Council Regulation (EC) 6/2002, OJ EC No L3 (2002); U.K. Copyright, Designs, and Patents Act, c. 48, §§ 213, 216, 269 (1988); Laws & Regulations on Setting Up Business in Japan, §5.7, §5.8.2.
  24. Intellectual Property code, L112-12, L112-2 °14.
  25. See C. Scott Hemphill & Jeannie Suk, The Law, Culture and Economics of Fashion, 61 Stanford Law Review, 1147, 1164 (2009) (hereinafter “Hemphill & Suk”).
  26. Kristin L. Black, Crimes of Fashion: Is Imitation Truly the Sincerest Form of Flattery? 19 Kan. J.L. & Pub. Pol’y 505, 507 (2009-2010).
  27. Hemphill & Suk at 1165.
  28. Id.
  29. Susan Scadafi is a professor at Fordham Law and an important proponent of protection of fashion designs.
  30. S. 3523, 112th Cong. (2012) amendment to § 1301 of 17 U.S.C.
  31. Société Yves Saint Laurent Couture S.A. v. Société Louis Dreyfus Retail Mgmt. S.A., E.C.C. 512, 514 (Trib. Comm. (Paris) 1994).
  32. Hemphill & Suk at. 1175.
  33. 15 U.S.C. § 1125 (c)(2)(B).
  34. 15 U.S.C. § 1125 (c)(2)(C).
  35. Hemphill & Suk at 1176; See also Erika Myers, Justice in Fashion: Cheap Chic and the Intellectual Property Equilibrium in the United Kingdom and the United States, 37 AIPLA Q.J. 47, 78 (2009).
  36. See e.g., Playboy Enterprises, Inc. v. Welles, 279 F.3d 796, 805 (9th Cir. 2002); I.P. Lun Trading ApS v. Kohler co, 163 F.3d 27, 50 (1st Cir. 1998)
  37. Lucille M. Ponte, Preserving Creativity from Endless Digital Exploitation: Has the Time Come for the New Concept of Copyright Dilution? 34 B.U.J.SCI. & TECH. L. (2009).
  38. Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687 (2006); Kal Raustiala & Christopher Sprigman, The Piracy Paradox Revisited, 61 VA. L. Rev 1201 (2009)
  39. Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property inFashion Design, 92 Va. L. Rev. 1687, 1733 (2006)
  40. Hemphill & Suk, 1182.
  41. Kal Raustiala & Christopher Sprigman, The Piracy Paradox Revisited, 61 VA. L. Rev 1201, 1206 (2009)
  42. Sara R. Ellis, Copyrighting Couture: An Examination of Fashion Design Protection and Why the DDPA and IDPPA are a Step Towards the Solution to Counterfeit Chic, 78 Tennessee Law Review, 163, 195 (2010).
  43. A Bill to Provide Protection for Fashion Design: Hearing on H.R. 5055 before the Subcomm. on Courts, the Internet and Intellectual Property on the H. Comm. on the Judiciary, 109th Cong. 9 (2006), statement Professor Sprigman.
  44. A Bill to Provide Protection for Fashion Design: Hearing on H.R. 5055 before the Subcomm. on Courts, the Internet and Intellectual Property on the H. Comm. on the Judiciary, 109th Cong. 9 (2006), statement Professor Sprigman.
  45. S Beltrametti, ‘Evaluation of the Design Piracy Prohibition Act: Is the Cure worse than the Disease? An analogy with Counterfeiting and a Comparison with the Protection Available in the European Community,’ 8 Northwestern Journal of Technology and Intellectual Property 147, 172 (2010).
  46. The New York Times noticed that Zara is a copycat but it “changes its designs just enough to evade copyright laws.” http://www.nytimes.com/2012/11/11/magazine/how-zara-grew-into-the-worlds-largest-fashion-retailer.html?pagewanted=4&_r=0
  47. Zara’s collection in 2011 was inspired by the Prada spring collection 2011. Some argue that Zara went to far, nevertheless the designs had added creative elements and the designs were not close copies of Prada, but derivative works.
  48. Sara R. Ellis, Copyrighting couture: an examination of fashion design protection and why the DDPA and IDPPA are a step towards the solution to counterfeit chic, 78 Tennessee Law Review, 163, 195 (2010).
  49. Id at.195
  50. Council Directive 98/71, 1998 O.J. (L 289) 28, 30 (EC).
  51. Id. art. 4.
  52. Id. art. 5.
  53. Council Directive 6/2002, OJ EC No L 3 (2002).
  54. Id. art. 19 (1)
  55. Id. art. 12
  56. Id. art. 11
  57. Id. art. 3
  58. Id. art. 10
  59. Id. art. 19 (2)
  60. Laura Fanelli, A Fashion Forward Approach to Design Protection, 85 St. John’s L. Rev. 285, 304 (2011)
  61. J Choo (Jersey) Ltc. v. Towerstone Ltc. (2008), EWHC 346 (Ch) at 1-2
  62. Code de la Propriété Intellectuelle (2010) L-112-1.
  63. Id at. L-112-2 L-112-4
  64. The New Trend: Protecting American Fashion Designs through National Copyright Measures, 28 Cardozo Arts & Ent. L.J. 405, 413.
  65. Roth, Jacoby & Schiff Hardin LLP, Copyright Protection and Fashion Design, 967 PLI/PAT. 1081, at 1102 (2009).
  66. Societe Yves Saint Laurent Couture S.A. v. Société Louis Dreyfus Retail Mgmt. S.A., E.C.C. 512, 514 (Trib. Comm. (Paris) 1994).
  67. Copyright, Designs, and Patents Act 1988, c.48. § 213-264
  68. Copyright, Designs, and Patents Act 1988, c.48 § 213 (3)
  69. Id § 216 (1) (a).
  70. Id § 233; See also The New Trend: Protecting American Fashion Designs through National Copyright Measures, 28 Cardozo Arts & Ent. L.J. 405, 415.
  71. Erika Myers, Justice in Fashion: Cheap Chic and the Intellectual Property Equilibrium in the United Kingdom and the United States, 37 AIPLA Q.J. 47, 75 (2009).
  72. Erika Myers, Justice in Fashion: Cheap Chic and the Intellectual Property Equilibrium in the United Kingdom and the United States, 37 AIPLA Q.J. 47, 77 (2009).
  73. H.R. 5055, 109th Cong. (2006).
  74. S. 1957, 110th Cong. (2007); H.R. 2196, 111th Cong. (2009).
  75. Aya Eguchit, Curtailing Copycat Couture: The Merits of the Innovative Design Protection and Piracy Prevention Act and a Licensing Scheme for the Fashion Industry, 97 Cornell L. Rev. 131, 146 (2011-2012)
  76. S. 3728, 111th Cong. (2010).
  77. S. 2511, 112th Cong. (2011).
  78. Aya Eguchit, Curtailing Copycat Couture: The Merits of the Innovative Design Protection and Piracy Prevention Act and a Licensing Scheme for the Fashion Industry, 97 Cornell L. Rev. 131, 149 (2011-2012)
  79. S. 3523, 112th Cong. (2012).
  80. S. 3523, 112th Cong. (2012) amendment to § 1301.
  81. S. 3523, 112th Cong. (2012) amendment to § 1309.
  82. Hemphill & Suk, at 1176.
  83. Id. at 1176.
  84. Trovota, Inc. v. Forever 21, Inc., No. 09-CV-04514 (C.D. Cal. 2007).