Fashion designers in the United States have struggled to develop legal strategies that adequately protect their work while still recognizing that fashion is an evolutionary art that draws on what has come before it. As such, fashion does not fall squarely under the complete protection of any of the three statutory US intellectual property schemes: patents, trademarks, and copyrights. Consequently legal strategies for protection must balance creative combinations of these laws, with business goals, and, of course, budgets.
Patents, an often overlooked area of protection for fashion, grant US designers the limited right to exclude others in the marketplace from making, using, offering for sale, or selling the invention or design. By specifically employing utility patents and design patents, designers can create new revenue streams through licensing, sale or enforcement of the patent.
Utility patents, the most common type of patent in the United States, offer the strongest form of protection for functional features of clothing or manufacturing processes. Designers holding utility patents are able to prevent competitors from replicating their patented product and entering the market. For example, Levi Strauss uses its utility patented rivets to secure pocket openings on Levi Strauss clothing. Competitors could not use this method for a period of time to create pocket opening on clothes unless their competitor licensed the technology from Levi Strauss. While utility patents are a powerful tool, the expense and three year period of time to obtain them can be prohibitive. In light of the market's demand for seasonal changes, securing a timely utility patent is a challenging form of protection because few designers enjoy the market success to justify the investment in a utility patent.
Design patents – a less costly and quicker alternative to utility patents – provide protection for novel, ornamental product designs. The key here is that the design is in fact, novel. While design patents usually issue in about one year, they offer more narrow protection. Designers are limited to the drawing of the product or feature as it appears in the patent application. A familiar example of a design patent for footwear is the shoes produced by Crocs, Inc. Although a design patent offers more limited protection than a utility patent, designers find the more economical costs associated with securing it very appealing. And design patents can be a potent method for retaining rights in unique designs.
Designers create their commercial identities through trademarks. Trademarks allow designers to distinguish their goods in the marketplace and communicate unique and distinctive value to the consumer. Therefore, the fashion designer's most valuable asset is the trademark, name, or logo which imbues designs with the power of their brand. Nevertheless, trademarks offer limited protection. A trademark application must be tied to specific goods or services. Consequently, if a designer procures a US trademark registration for shirts, the trademark protection does not automatically extend to other goods (unless of course the registration also covers other goods or one makes the argument that the mark carries over to all apparel). Therefore, it is key to work with a legal advisor when planning a trademark strategy.
Designers are increasingly adopting as trademarks non-traditional elements repeated throughout their collections. Consumers recognize and associate these repeated elements with a particular designer. Through consistent use as a source identifier and consumer recognition of the same, designers may be able to protect this element as a trademark through federal registration. For example, women's high heel shoes with red soles bring to mind the designer Christian Louboutin. A designer may adopt a colour as a trademark so long as the designer can show that the colour is recognized by the public as a source identifier for the designer's goods. A designer will not be given an exclusive right to a colour or element if it has a functional aspect (such as, the slimming function of black). For example, a trademark owned by a single designer in the colour black for use in connection with dresses would unfairly prevent other designers from making use of the colour black and its "slimming" function.
Another challenge for designers seeking federal registration of a non-traditional trademark is that it may be deemed ineligible because the proposed mark is merely ornamental or decorative. Designers, who attempt to feature a large or atypically placed design, logo, or other element on a product, often find their applications rejected on the ornamental, decorative basis. The difficulty for designers arises because a bright line between trademark and ornamental does not really exist. In determining whether the element can function as a trademark, much weight will be given to the size, location and dominance of the proposed trademark as it appears on the goods. Consequently, smaller traditionally placed trademarks (e.g., a small logo on the left breast of a collared shirt) have more readily been granted registration as consumers have come to expect and recognizes trademarks in those places.
Nevertheless, recent case suggests that larger logos can be protected when placed in a non-traditional location so long as the public identifies that logo as emanating from the designer.
Designers' inspirations for their creative works (designs) derive from a myriad of sources including daily life observations and the work of other designers from the past and present. Designers seeking copyright protection must therefore avoid infringing on another party's rights in a similar design.
US copyright law allows designers to seek copyright protection for jewellery, fabric designs or patterns. Much litigation swirls around the protection of fabric designs and patterns, this is a potent area of protection in the fashion industry. Copyright protection does not extend to "useful articles"1 such as clothing. If the purportedly useful article design incorporates graphic or sculptural features that can exist independently of the utilitarian aspects of the article (clothing), then the designer may be able to obtain copyright protection.
DEVELOPING AN EFFECTIVE LEGAL STRATEGY
Developing an effective legal strategy to protect a fashion line in the US (and, indeed, anywhere in the world) requires an investment of time, money and creativity. Patent, trademark and copyright provide varying degrees of protection that each has its own costs and limitations. Nevertheless, developing and implementing a successful strategy can generate new revenue streams for designers and keep the designer's vision unique and distinctive in the marketplace. Working with an experienced fashion lawyer allows a designer to develop a comprehensive strategy that properly balances the protection offered by each of these legal tools with the market reality.
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