United States: From Runway To Replica: Intellectual Property Strategies For Protecting Fashion Designs

Last Updated: February 12 2016
Article by Natasha N. Reed

Designers like Alexander Wang, Rebecca Minkoff, and Michael Kors are all gearing up to premier their 2016 fall/winter collections this month during New York Fashion Week.  Fashion Week draws more than 230,000 attendees each year to over 500 runway shows and events in New York City.  The economic impact of this biannual event is estimated to be close to $900 million. That's more than the U.S. Open, which generates approximately $750 million annually for New York, and the Super Bowl, which generated an estimated $550 million when it was held in the New York metropolitan area in 2014.

Despite these numbers, the economic impact on the fashion industry from the sale of counterfeit and infringing fashion products is staggering.  A report issued by the EU's Office for Harmonization in the Internal Market found that approximately 10% of fashion products sold are counterfeits, amounting to approximately $28.5 billion of lost revenues per year. Some designers also fear that inventions such as 3D printing could make it possible for even the average consumer to replicate runway fashions.  Rapper turned designer Kanye West, who is expected to release the third installment of his fashion collection "Yeezy" at New York Fashion Week this month, echoed this fear, noting that 3D printing could one day impact the fashion industry, just as "the internet destroyed the music industry."  But even without 3D printers, a consumer can easily obtain a less expensive replica of an independent designer's fashions, sometimes before the design hits the general market. It only takes one cell phone photo, snapped at a fashion show and sent overseas, to cheaply manufacture less expensive replicas and ship them back to the states before the designer has even had a chance to produce and sell her original design.

Thankfully, U.S. intellectual property law offers designers some protection against the sale of counterfeit and infringing fashion products.

Patent Law

U.S. patent law provides protection for certain fashion products.  Design patents, which last for 14 years, can protect footwear, jewelry, handbags and other fashion accessories, provided the design is novel, nonobvious and ornamental (as opposed to functional).  Some well-known fashion designs are the subject of U.S. design patents, including Bottega Veneta's "Veneta" handbag and Jimmy Choo's "With a Twist" shoe design. Clothing designs can be difficult to patent because they are unlikely to be novel or nonobvious enough to merit patent protection.  Occasionally, a design patent will be granted for clothing, like Christian Dior's coat dress.  However, design patents can take up to a year to obtain, which can sometimes exceed the lifespan of a seasonal fashion design.

Copyright Law

U.S. copyright law protects jewelry designs and certain aspects of other fashion designs, such as original patterns and prints, and design elements like belt buckles or embellishments, provided that the designs are original, creative, and physically or conceptually separable from the function of the article.  However, copyright protection does not extend to clothing itself, because clothing is considered a "useful article" and unable to exist independently from its utilitarian features.  The fashion industry has lobbied Congress to extend copyright protection to clothing and, over the years, Congress has proposed several bills that would provide for greater protection. The latest bill is the Innovative Design Protection and Piracy Prevention Act (known as the "Fashion Bill") which, if passed, would extend copyright protection for up to three years to original fashion designs, including clothing.  Proponents of the bill state that it will close the gap in U.S. copyright law and keep up with the laws of certain European countries, which already provide copyright protection for apparel. Opponents of the bill state that the law will stifle creativity and increase legal costs for independent designers.  For now, the bill remains stuck in a congressional subcommittee.

Trademark Law

Currently, U.S trademark law offers the best protection for fashion designs.  In addition to protecting a designer's name and logo, trademark law can also protect fashion design elements, including prints and patterns (like Burberry's plaid print), distinctive stitching (like the U-shaped jean pocket stitching owned by True Religion/Guru Denim), and colors (like Christian Louboutin's red bottom shoe soles).  Trademark law also protects the design and appearance (known as the "trade dress") of certain fashion products, including handbags (like Hermès' Birkin bag) and shoes (like Converse's Chuck Taylor sneakers). In addition to registering these marks with the United States Patent and Trademark Office, designers can also record their trademark registrations with U.S. Customs & Border Protection, in an effort to prevent the importation of infringing products. However, trademark protection only extends to fashion designs that are non-functional and have achieved a certain level of consumers recognition. Thus, it is highly unlikely that the overall design of a pair of Isabel Marant boots, premiering on the runway at New York Fashion Week, would immediately be entitled to trademark protection, since consumer-source recognition can take time to develop.  Additionally, while trademark law may protect distinctive design elements or a combination of those features, it remains difficult to obtain trademark protection for the entire "look" of a piece of clothing.

Cases

While U.S. intellectual property law may not allow designers to protect every single aspect of a design, several designers have used the law to successfully shut down counterfeiting and design piracy operations in recent years, with big wins in U.S. federal courts.  Below are a few recent cases where fashion houses and designers have successfully used creative tactics to stop counterfeits and infringements:

Chloe and other luxury fashion brands successfully sued Pakistan-based e-commerce company TradeKey and others for contributory infringement and violation of U.S. counterfeiting laws, by aiding in the sale of counterfeit products.  The fashion companies launched an investigation which uncovered that TradeKey actively promoted and facilitated the sale of counterfeit goods, by operating a virtual swap meet which allowed its members to engage in wholesale counterfeiting of the plaintiffs' products.  The Central District of California granted a broad injunction against TradeKey, which included compliance and monitoring requirements. The Court also awarded Chloe and the other plaintiffs statutory damages against TradeKey and the actual sellers of the infringing products. Chloe SAS et al v. Sawabeh Information Services, 2013 U.S. Dist. LEXIS 187398 (C.D. Ca. 2013) and 2014 U.S. Dist. LEXIS 60188 (C.D. Ca. 2014).

Tory Burch successfully shut down hundreds of rogue websites, operated by 41 defendants based in China, which had been selling counterfeit copies of the company's signature ballet flats and accessories bearing the Tory Burch name and "T" logo.  The Southern District of New York granted Tory Burch a temporary restraining order and a preliminary injunction, freezing the defendants' PayPal accounts.  The Court handed down an award of $4 million in damages against each defendant, totaling $164 million.  Since the defendants are all based in China, it is unlikely that Tory Burch will fully collect on the judgment.  Nonetheless, the assets held by the defendants' PayPal accounts were released in partial satisfaction of the award and the judgment, which is reported to be one of the largest sums ever awarded for counterfeiting fashion products. Tory Burch LLC v. Yong Sheng Int'l. Trade Co. Ltd., 2011 U.S. Dist. LEXIS 158882 (S.D.N.Y.  May 13, 2011).

Gucci America, after successfully going after TheBagAddiction.com for selling fake Gucci bags, sued three credit card processing entities for their role in enabling TheBagAddiction.com to process online payments. Gucci claimed that the credit card processing companies knew that the products were fake and charged the counterfeit retailer a higher rate as a result.  Although Gucci could not establish direct liability, the Court found that the credit card processing companies did meet the test for contributory infringement, because they either knew that the Gucci-branded goods were counterfeit, or were willfully blind to that fact, and the service they provided gave them control and the ability to monitor the unlawful activity.  All claims were subsequently dropped pursuant to a confidential settlement. Gucci America, Inc. v. Frontline Processing Corp., 721 F. Supp.2d 228 (S.D.N.Y. 2010).

Balenciaga and other luxury brands, including Bottega Veneta, Gucci and Yves Saint Laurent, successfully obtained a temporary restraining order and preliminary injunction, freezing various bank accounts belonging to various individuals selling counterfeit copies of the plaintiff's fashion products, including overseas bank accounts.  The court held that, because it had jurisdiction over the defendants, it also had authority to freeze assets under the defendants' control, regardless of whether the assets were in or outside the United States. Balenciaga and the other plaintiffs eventually obtained a default judgment for $12.4 million and an order from the court directing all parties holding assets for the defendants to liquidate those assets in partial satisfaction of judgment. Balenciaga America, Inc. v. Dollinger, 2010 U.S. Dist. LEXIS 107733 (S.D.N.Y. Oct. 8, 2010).

Strategies

With the foregoing in mind, fashion designers should consult with legal counsel and consider all areas of intellectual property law in order to maximize protection in the United States for their fashion designs. Below are some tips:

  1. At a minimum, designers should file for a copyright registration for any original prints and patterns, and consider filing for a copyright registration for any design elements that can be physically or conceptually separated from the functional aspects of the designer's apparel and accessories.
  2. If the fashion design is expected to last beyond a season and can be considered an ornamental, novel and nonobvious design, then the designer should also consider applying for a design patent.
  3. Designers should also consult with legal counsel to consider whether their fashion designs, or any of the individual elements that make up their design, are nonfunctional and have sufficient acquired distinctiveness to merit trademark protection and registration as a trade dress.
  4. Further, while most designers and brands have taken the basic step to register their names and logos as trademarks, many overlook recording their trademark registrations with U.S. Customs. In fact, some well-known designers and brands participating in Fashion Week this month do not seem to have their trademarks recorded at U.S. Customs.  We could not find any Customs recordals for Nicole Miller, Marchesa, and Hervé Léger, to name a few, although they all have registered U.S. trademarks and are well-known brands vulnerable to counterfeiting. Even Kanye West seems to have overlooked recording his name and trademarks with U.S. Customs.
  5. Designers should also consider creative ways to stop infringements, including seeking to freeze the infringer's assets and bringing third-party liability actions that target landlords and flea market owners that house counterfeit and infringing products. Fashion designers can also go after internet service providers and payment processing companies that enable online purchases of counterfeit and infringing goods.

But fashion designers must also recognize that not all replicas are actionable.  While counterfeits sold on the streets of New York or online bearing a designer's brand name or logo are clearly actionable, replicas sold by "fast fashion" retailers like Zara, Forever 21 and Urban Outfitters sometimes are not.  These retailers will likely consult with legal counsel to determine whether their designs, which are often inspired by runway fashions, are sufficiently different to avoid liability, and whether the design elements they have borrowed from the runway are even protected under current U.S. law. Designers should similarly work with experienced IP counsel to develop effective and well-informed strategies for protecting and enforcing their rights.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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
Events from this Firm
14 Dec 2017, Seminar, Boston, United States

The trustees of The Foley Hoag Foundation invite you to the upcoming Speaker Series event with David Friedman, Senior Vice President, Legal & Government Affairs of the Boston Red Sox.

15 Dec 2017, Seminar, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). 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 & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

Disclaimer

Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Emails

From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.