United States: Copyright In Vogue: The Proposed "Design Piracy Prohibition Act"

On March 30, 2006, bi-partisan legislation titled the "Design Piracy Prohibition Act" (DPPA) was introduced. H.R. 5055. The stated purpose of the DPPA is to "prevent anyone from copying an original clothing design in the United States and give designers the exclusive right to make, import, distribute, and sell clothes based on their designs." "Copycatfight," Henry Lanman, Slate magazine (March 13, 2006).

Designers and apparel manufacturers in the United States historically have had no capability to protect the actual designs of their apparel items. Clothing is considered a "useful article," ineligible for copyright protection in the United States; furthermore, fashion designs are often inspired by past designs so originality becomes an issue. Without copyright protection, fashion designers traditionally relied on trademark and trade dress law to enforce their rights against counterfeiters who illegally use their famous brand name or copy the overall "look and feel" of a product. But those trademark rights afford little protection against knock-offs which copy the design of a product, but do not trade on the designer’s name or manufacturer brand.

Design piracy has been on the rise in today’s era of digital technology as digital cameras and the Internet make it easy and quick to copy fashion designs as soon as they debut on the runway. The proposed DPPA legislation would provide limited copyright protection for fashion designs and apparel, and make it illegal for others to infringe such copyright in original fashion designs.

The DPPA would grant copyright protection to "fashion designs," defined as "the appearance as a whole of an article of apparel, including its ornamentation." Proposed 17 U.S.C. § 1301(b)(7). "Apparel" is defined to include articles of clothing (including undergarments, outerwear, gloves, footwear, and headgear), belts, eyeglass frames, handbags, purses, and tote bags. Proposed 17 U.S.C. § 1301(b)(9).

A fashion design would be considered "original" and protectable "if it is the result of the designer’s creative endeavor that provides a distinguishable variation over prior work pertaining to similar articles which is more than merely trivial and has not been copied from another source." Id. at proposed § 1301(b)(1). A fashion design may not receive protection under the DPPA if it is (1) not original, (2) a staple or commonplace, (3) dictated solely by a utilitarian function of the article that embodies the design, or (4) different from a staple or commonplace design only in insignificant details. Proposed 17 U.S.C. § 1302.

A designer or owner seeking to protect a fashion design under the DPPA must file a copyright application within three months of when the design is made public by the designer/owner in the United States or a foreign country. Id. at proposed § 1310(a); Proposed § 1302(5)(B). "A design is made public when an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for individual or public sale or sold to the public by the owner of the design or with the owner’s consent." Proposed 17 U.S.C. § 1310(b). Once registered, the copyright protection would last only three years, the typical market lifespan for a fashion design. Proposed 17 U.S.C. § 1305.

The acts which would constitute infringement of the copyright in a fashion design are: (1) to make, have made, or import, for sale or for use in trade, any infringing article; or (2) sell or distribute for sale or for use in trade any such infringing article. Proposed 17 U.S.C. § 1309(a).

An "infringing article" is "any article the design of which has been copied from a design or from an image thereof protected under this chapter, without the consent of the owner of the protected design." Id. at proposed § 1309(e). Infringing articles do not include illustrations or pictures of protected fashion designs in an advertisement, book, periodical, newspaper, photograph, broadcast, motion picture, or similar medium. Id.

A design would not be infringing if it is original and not substantially similar in appearance to a protected design. Nor would there be liability if a party acts without knowledge or reasonable grounds to know that protection for the design is protected. Proposed 17 U.S.C. § 1309(c). Finally, the DPPA would allow protected fashion designs to be reproduced for teaching or analysis of the appearance, concepts, or techniques embodied in the design, or the function of the useful article embodying the design. Id. at proposed § 1309(g).

The DPPA would provide the following remedies for infringement of protected fashion designs: (1) compensatory damages, not to exceed $250,000 or $5 per copy, within the court’s discretion (these are figures specially set for the DPPA and differ from traditional copyright statutory damages); (2) recoupment of the infringer’s profits, based upon sales reasonably related to use of the protected fashion design; (3) attorney’s fees; and (4) the destruction or disposition of all infringing articles. Proposed 17 U.S.C. § 1323. The DDPA provides for a three-year statute of limitations for all infringement suits. Id. It is not intended to affect common law rights or remedies, trademark or unfair competition rights or remedies, or any other rights otherwise existing under the Copyright Act. Proposed 17 U.S.C. § 1330.

As of this writing, the DPPA had been referred to the House Committee on the Judiciary for review and is far from enacted. Nevertheless, its proposal highlights the strong desire of the fashion industry to stop design piracy here in the United States and in the global marketplace.

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