Fashion Law in Flux?
Anyone who has ever walked on a New York City street or any mall in America, amidst knock-off clothes, purses and watches, may wonder about the legality of those imposter products. Fashion designs are currently not protected in the United States under any of the “big three" of intellectual property (IP) law—patent, copyright or trademark. Patents are for functional, novel inventions, but since clothing is already part of the public domain it cannot qualify for patent protection. Copyrights are for non-utilitarian works of art, but since clothing serves a purpose aside from its aesthetics, it is not eligible for copyrights. That leaves fashion designers only with trademark protection, which protects words, symbols, and the “other stuff" that serves to identify a product to its consumers. Trademark protection in fashion is difficult to obtain beyond a label or logo because a certain design cannot be ascribed to its particular creator in the minds of consumers. (The Louis Vuitton toile pattern is a good example of a trademark in fashion.) While some people in the industry are arguing for change, others like the law right where it is.
The 2011 case of Louboutin v. Yves Saint Laurent (YSL), illuminated a current issue in design protection. Louboutin claimed a trademark in its use of a red outsole for women’s shoes, alleging that YSL infringed this trademark when YSL made a fully red women’s shoe that included a red outsole. The judge denied the preliminary injunction sought by Louboutin, stating that a color could not be trademarked because it is an essential element of fashion design. Even if the red outsole had achieved recognition in the minds of consumers, the “ornamental and aesthetic functions vital to robust competition" in fashion allowed this result. Some commentators would agree with the judge, saying “it’s all been done before" in fashion, and that copying actually spurs competition, increasing demands for new designs and resulting in higher apparel sales.
But another school of thought favors increased protection, in the form of special legislation for fashion designs. The Innovative Design Protection and Piracy Act (IDPPA or “Act"), introduced in some form four times since 2006 and allowed to expire without a vote each time, was revived in July of 2011 and referred to the House Judiciary Committee. The Act would provide three years of copyright protection for a design that is a “unique, distinguishable, non-trivial and non-utilitarian variation" on other designs. Supporters of the bill cite laws in other countries as persuasive precedent for such protection. France, for example, grants the same copyright protection that is afforded for works of literature, paintings, or sculptures. Japan and India provide 10 years of protection automatically to fashion designs. A vote by both houses of Congress is necessary for the bill to become law, and no vote is scheduled at this time.
The bottom-line for those of you in the fashion space is to first really consider your trademark and make certain you start with a strong mark that can offer maximum protection. Our TEST YOUR TRADEMARK feature on our website (see below) offers some very straight forward guidance on how to choose a trademark. As for copyright protection for fashion designs in the US? We will just have to wait and see . . .