United States: Protecting Fashion Designs Through IP Law

The fashion industry in the United States generates more than $300 billion in revenue each year. In addition to its substantial contributions to the U.S. economy, fashion is considered a form of art

The Metropolitan Museum of Art in New York City holds numerous exhibits showcasing fashion designs. Among the most notable are ones honoring Coco Chanel, whose iconic designs revolutionized the way women wear clothes, including accelerating the popularity of trousers during the 1920s; Alexander McQueen, whose designs are credited with bringing a sense of fantasy and rebellion to fashion; and Charles James, who used sculptural, scientific and mathematical approaches to construct iconic ball gowns, and whose innovative tailoring continues to influence designers today.

Despite the economic and artistic contributions of fashion, very limited legal protections for fashion design are currently available in the United States. Although the fashion industry is fast-paced, due to modern technology, images of the latest designs are quickly disseminated online and into the hands of copycats, who immediately begin producing knockoffs and counterfeits. This makes it increasingly challenging for designers to achieve a sustainable financial return on their creative investments.

The fashion industry has lobbied Congress to modernize U.S. law and allow for greater protection of designs. This would bring the United States up to the same standard as other countries, such as France, Italy and the United Kingdom, where fashion designs themselves are protectable. Currently, in the United States, only elements of a design are protectable.

Three theories of intellectual property are available to protect fashion designs: trade dress, copyright and design patents. As discussed below, each has unique requirements, benefits and challenges.

Trade Dress

Trade dress is a part of trademark law, which is primarily governed by the Lanham Act. Trademark law offers federal and common law protection for a word, symbol or phrase used by producers to identify their products, as long as it serves as a source identifier. Fashion designers have been able to use trademark law to protect their brand names and logos by registering them with the U.S. Patent and Trademark Office; however, this often is not enough.

In recent years, trademark law has expanded to protect other aspects of a product, such as its color, packaging or design, under trade dress. More specifically, trade dress protects the visual characteristics of a product as long as those characteristics signify the source of the product to consumers and are not functional.

In 2000, the U.S. Supreme Court rendered its opinion in Wal-Mart Stores v. Samara Brothers, 529 U.S. 205 (2000), where trade dress was divided into two categories: protection for product packaging and protection for product design. Samara Brothers brought an infringement suit against Wal-Mart for copying its design of children's clothing. Samara Brothers attempted to assert trade dress protection in the nonregistered designs. However, the court ruled in favor of Wal-Mart, holding that where Samara Brothers' alleged trade dress was in the product itself, not the packaging for the product, it would need to show secondary meaning.

Product packaging refers to the "dressing" of a product, which is recognized by consumers as identifying the source of the product. The court articulated that product packaging can be protectable if it is inherently distinctive or has acquired secondary meaning. In contrast, product design, which is the actual product or a physical element of the product, never can be inherently distinctive, and a showing of secondary meaning is required. In essence, in order to protect a product design, or in this case a fashion design, the brand owner must prove that consumers associate the design with the brand.

A showing of secondary meaning can be very challenging to achieve in the fashion industry, where fashion trends change at the drop of a hat. However, some designers have been able to use trade dress law to protect their designs. For example, famous French shoe designer Christian Louboutin, known for his infamous red-soled shoes, prevailed in 2012, in Christian Louboutin v. Yves Saint Laurent, 696 F.3d 206 (2012). The U.S. Court of Appeals for the Second Circuit overruled a lower district court and held that Louboutin's signature red shoe sole was a "distinctive symbol" that had come to represent the brand and deserved trademark protection. The court relied on Qualitex v. Jacobson Products, 514 U.S. 159 (1995), which held that a single color alone can serve as a trademark, as long as that color has acquired secondary meaning and identifies the brand.

Companies interested in securing trade dress protection for their fashion designs should consider the manner in which they will market their designs to create an association between the designs and the company, in order to show secondary meaning.

Copyrights

Currently, fashion designs are not protectable under the U.S. Copyright Act. However, even though designs themselves are not protectable because they are considered functional items, certain aspects are protectable, such as original prints, patterns, unique color arrangements and novel combinations of elements used on a design.

Protection for these certain aspects of a design can be obtained "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," according to the act.

The test for separability can be met by showing either physical or conceptual separability, where a clear line must be drawn between "copyrightable works of applied art and uncopyrighted works of industrial design." As a result, copyright law will protect the design of the article of clothing but not the article of clothing.

The fashion industry has been lobbying Congress for new legislation that would allow for extended protection to apparel designs. The industry has pointed out how copyright law throughout Europe allows for such protection, while the United States lags behind, offering protection only for certain elements of an apparel design.

Over the past decade, several bills have been proposed that would have increased copyright protection for fashion designs. The latest, the Innovative Design Protection Act of 2012, was introduced Dec. 12, 2012, but it was never passed. It would have amended Chapter 13 of Title 17 of the Copyright Act, and the most significant change would have been to allow protection of fashion designs for up to three years. This would allow a designer to sue for infringement anyone who copies, or makes a substantially similar copy of, the protected fashion design.

Copyright law is meant to promote the development of creative industries. Proponents of the legislative amendment to copyright law believe that the fashion industry is entitled to the same protections afforded to the music, film and book publishing industries.

Design Patents

Two types of patents are available under the U.S. Patent Act: utility patents and design patents. Designers can obtain protection for their fashion designs by applying for a design patent.

Design patents protect the look of a design, or ornamentation, as long as it is novel, nonfunctional and nonobvious to a designer of ordinary skill in the art. When applying for a design patent, the designer must claim certain features of the design that are to be protected; therefore, the patent is directed at the basic design concept, not the exact product the designer sells.

Generally, design patents are granted for handbags, shoes, jewelry designs and more. Apparel designs are generally deemed unpatentable because they are considered functional. More so, apparel designs are considered to be obvious and not novel. Although certain elements of a design are not novel or obvious, their combination in that design may be. Therefore, a designer can patent key elements and important parts of the apparel design.

Design patents can be useful because they grant designers the right to exclude others from making similar or substantially similar products. Also, more significantly, a designer is not limited to obtaining a single design patent per product. Each element of a design can be covered under a separate patent, which expands the design's protection.

Options Exist

Although no clear law protects fashion designs in their entirety, given the variety of protection options available, a designer can use trademark, copyright and patent law to obtain protection for different aspects of their designs. While the fashion industry will likely continue trying to obtain greater protection, it may be comforting for designers to know options exist with respect to protecting the innovation and creativity in their work.

Christiane Schuman Campbell is a partner in Duane Morris' intellectual property practice group. She has extensive experience with trademark maintenance and enforcement, including enforcement over the Internet. Her trademark litigation experience also includes matters before the Trademark Trial and Appeal Board and collaborating with counsel outside the United States on foreign opposition and cancellation actions.

Previously published in The Legal Intelligencer

Disclaimer: This Alert has been prepared and published for informational purposes only and is not offered, nor should be construed, as legal advice. For more information, please see the firm's full disclaimer.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
 
Email Address
Company Name
Password
Confirm Password
Country
Position
Industry
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions