Michelle Mancino Marsh

Michelle Mancino Marsh

Introduction
It is a common misconception that fashion in the United States is unprotected by IP law.

Proponents of an amendment to the Copyright Act are frequently heard to make this case. Some academics have remarked that "fashion designs... fall between the seams of traditional intellectual property protections" (Christine Cox and Jennifer Jenkins, Between the Seams, A Fertile Commons: An Overview of the Relationship Between Fashion and Intellectual Property, Norman Lear Centre Conference Report at 6 (29th Jan 2005); learcenter.org/pdf/RTSJenkinsCox.pdf). However, this is not the whole story. While copyright protection does not presently extend to entire silhouettes and the overall look and feel of articles of apparel, as it will if a proposed amendment to the copyright law is passed, fashion designs nonetheless enjoy a broad range of IP protection.

Articles of apparel and accessories can be protected in the United States under copyright, trade dress and patent law, and enforcement of these rights through cease and desist letters and litigation is robust and widespread. This update summarises the current scope of IP protection for fashion.

Trade dress
The term "trade dress" refers to a form of trademark protection in the overall look and feel of a product or its packaging that signify the source of the product to consumers. A "trademark" is a word, symbol or device that may be used to identify the source or origin of goods and services, guarantee the quality of the goods bearing the mark and distinguish them from others. A trademark owner may file for a registration in the US Patent and Trademark Office (USPTO), which is renewable every 10 years for as long as the mark is in use and continues to serve a trademark function. However, the owner of a valid trademark does not need a registration in order to enforce its rights in the mark. In the fashion industry this can include:

  • The design and shape of an article of clothing or accessory.
  • The layout and design of retail stores.
  • The look and feel of a product's packaging.

The Supreme Court has stated that the design of a product is protectable only when it has achieved a certain level of recognition among consumers or a secondary meaning (Wal-Mart Stores, Inc v Samara Bros, Inc, 529 US 205, 215 (2000)). To acquire secondary meaning, a product design must have special significance to the public, such that it is an identifier of the source of a product. Like trademarks, trade dress may be the subject of a registration with the USPTO, but an owner may enforce rights in both registered and unregistered trade dress. Some examples of registered trade dress for articles of fashion are depicted below.
  
Hermès' 'Kelly Bag' (US Trademark Reg 1,806,107)

  

Asics Corporation's sneaker design (US Trademark Reg 3,526,617)
  
Guru Denim d/b/a True Religion's pocket-stitching design (US Trademark Reg 3,561,466)

A case for infringement of trade dress is made when a third party uses the same or similar trade dress, creating a likelihood of confusion among the relevant public as to the source of the goods. The key is to demonstrate that consumers see the trade dress and think of one source. Reinforcing the trade dress through targeted advertising to consumers is especially helpful in order to gain high levels of consumer recognition. Well-known companies such as Hermès have successfully enforced their trade dress against lookalikes, but smaller companies have also done so. For example, a small women's apparel company claimed infringement of its trade dress rights in its hand-painted embellished clothing by another company offering a "near exact imitation" of those embellishments. A federal court in Florida found that the law "seeks to protect [the plaintiff's] designs from being associated or confused with [the] Defendants'" (Magical Mile, Inc v Benowitz, 510 F Supp 1085, 1089 (SD Fla 2007)). Similarly, a federal court in New York upheld a small footwear company's trade dress claims for similar reasons, noting that "[t]he trade dress described by [the plaintiff] is the SHOE design itself" (Eliya, Inc v Kohl's Dept Stores, No 06 Civ 195 (GEL) (SDNY 13th Sept 2006)).

Copyright
Copyright protects original works of authorship. Copyright law does not currently protect entire garments, as they are considered "useful" items, but protection can extend to portions of them. For example, copyright protection extends to the following items:

  • Prints and other surface patterns used on garments and accessories, including lace.
  • Elements of designs (eg, brooches, belt buckles or embellishments), if they are conceptually separable from the function of the articles of apparel or fashion accessories.
  • Photographs of apparel and accessories.
  • A designer's sketches – even though the articles of apparel rendered from them are not protected.

Copyright arises automatically in every new creative work that is fixed in a tangible medium, but an author may file for a registration in the US Copyright Office. Copyrights created on or after 1978 last for the life of the author plus 70 years. A registration can give the owner the ability to seek statutory damages and attorney's fees in infringement litigation. Examples of copyright in fashion are depicted below.
  
Kidorable's 'Frog Sculpture Relief on Boot' (VA 985856 (15th June 1998))

  

Coach's 'Op Art' print (VA 1694574 (7th October 2009))

The standard for copyright infringement is whether a work bears a substantial similarity to the protected portion of a plaintiff's copyrighted work. For example, Coach, Inc, the luxury designer of fashion accessories and other leather goods, sued Kmart Corporation, claiming that certain handbags and luggage sold at Kmart infringed Coach's copyrighted "Op Art" print. In addition to the copyright claims, Coach accused Kmart of counterfeiting, trademark and trade dress infringement and false advertising, in addition to a handful of other IP property claims, and demanded millions of dollars in damages (Coach, Inc v Kmart Corp, No 10-CV-1731 (LMM) (THK) (SDNY 16th May 2011)). The parties settled out of court for an undisclosed sum.

Design patents
One of the most important and under-utilised forms of protection for fashion is the design patent. A design patent protects the novel ornamental design elements of functional and useful items. Design patents can cover clothing, footwear and accessories. Design patents provide 14 years of exclusivity in a design and can be obtained in roughly 10 months to one year from the USPTO. Some examples of patented designs are depicted below.
  

Bottega Veneta's "Veneta" handbag (US Patent D657,952)
  
Oakley's "Oil Rig" sunglasses (US Patent D572,745)
  
Jimmy Choo's "With a Twist" (US Patent D529,264)

 
Lululemon's "Astro" trousers (US Patent D662,281)

The standard for design patent infringement is the "ordinary observer" test. Specifically, a court evaluating a design patent infringement claim must determine whether an ordinary observer, familiar with the plaintiff's designs, would be deceived into believing that the accused product is the same as the patented design. The footwear industry has obtained and enforced design patents on various elements of footwear designs for nearly two decades, but the wider fashion community has been slow to follow suit. However, design patents are an excellent and cost-effective means of protecting designs that a company intends to use over several seasons. For example, Lululemon recently sued Calvin Klein, alleging infringement of its design patent covering the ornamental features of its popular yoga trousers, featuring a waistband with overlapping panels (Lululemon Athletica Canada, Inc v Calvin Klein, Inc, No 12-1034 (SLR) (D Del 13th Aug 2012)).

Comment
Protection for fashion designs exists within the current parameters of US IP law, but it is frequently misunderstood or vastly underused, as in the case of design patents.

For further information please contact:

Michelle Mancino Marsh
Hunton Andrews Kurth LLP
www.arentfox.com
Email: michelle.marsh@arentfox.com
Tel: +1 212 484 3900