The Emperor Has Little Protection For His Clothes
Over the past few weeks, New York, London, Milan and Paris have been showing off the fashions that will be “it” for the fall during their respective Fashion Week events. Designs, patterns, cuts, fabrics are all on display. Some are new takes on past trends or eras; others are imagination running wild. However, one thing is for certain, many of the looks will be replicated over and over by clothing manufacturers that are not selling their wares in high fashion districts.
There have been many who have argued that the United States does not protect fashion enough. Mark Twain once wrote, “Clothes make the man. Naked people have little or no influence on society.” In 2010, households spent, on average, $1,700 (in nominal terms) on apparel, footwear, and related products and services, which was about 3.5 percent of average annual expenditures, and in 2012, the US apparel industry generated total revenues of $338.7 billion. And yet, there is no specific protection of designs. In Europe, for example, fashion designs may be eligible for industrial design protection. However, in the United States, there is no such specific protection. The Innovative Design Protection Act of 2012 attempted to fill that perceived hole, but to no avail.
Fashion designers must rely on some combination of patents, copyright, and trademark to protect what they can and realize the rest will be knocked-off. Their hope is that people recognize a knock-off as an imitation and find the original as desirable. It is the difference between getting a wrap dress from Diane Von Furstenberg and Forever 21. See here for story on Jezebel.com showing several such knock-offs.
Patents are meant to protect new, non-obvious inventions. They provide a lengthy period of protection in return for disclosing the innovation. Utility patents are used to incentivize new functional items and processes. The function of clothing and accessories has remained the same for hundreds of years. However, new fabrics can receive such protection such as the product best known as Gore-Tex. Alexander Wang Incorporated also received a utility patent on an innovative shopping bag, and Speedo International Limited received utility patents for various versions of their FastSkin swimsuits.
Designers, however, have sought design patents at a much higher level. A design patent may relate to the configuration or shape of an article, the surface ornamentation applied to an article, or a combination of both. It consists of the visual ornamental characteristics rather than its function. To put it in its simplest terms, a utility patent protects the way an article is used and works, and a design patent protects the way an article looks. The subject matter must still be new, original and not dictated by function. That allows Valentino S.p.A. to register designs for shoes, boots, handbags, scarves, and textiles.
Copyright protects original works of authorship fixed in any tangible medium of expression. This may include patterns on a fabric or a picture on a shirt, but it cannot include the design of the shirt itself. Clothing is considered a “useful article”, which is defined by the statute as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” An article that is normally a part of a useful article is also considered a “useful article.”
According to statute, designs may be protected as pictorial, graphic, and sculptural works as long as they “include works of artistic craftsmanship.” The design of a useful article, is protectable “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.”
The Fifth Circuit Court of Appeals looked at the ability of a casino to copyright its staff uniforms in Galiano v. Harrah’s Operating Company, Inc., 416 F.3d 411 (5th 2005). They proclaimed that the test for whether one can copyright the designs proceeds in two steps. First, determine whether the asset for which the creator seeks copyright protection is a “useful” article. Second, determine whether the design incorporates features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. That is, the artistic aspects must be conceptually separable from the functional article and reflect the independent, artistic judgment of the designer. However, when the design of a useful article is “as much the result of utilitarian pressures as aesthetic choices,” the useful and aesthetic elements are not conceptually separable.
A belt buckle that is so artistic and separable from the belt, that a person may choose to wear it as a necklace or pin, is conceptually separable. But, the Fifth Circuit Court of Appeals found that features such as a distinctive bib front or mandarin collar with center front notch were separable as they are not marketable independent of their utilitarian function on casino uniforms. Nor were the arrangement of decorative sequins and crystals on a bodice, the horizontal satin ruching at a dress waist and the layers of tulle on a skirt enough to allow copyright protection of a prom dress.
Katy Perry and Fernando Sosa are currently and publically battling over the separability of functionality versus creativity right now over the design for Left Shark. The two parties are haggling over what part of a shark costume is functional and what is seperable as creative design alone.
One of the biggest tools the designers have in their high-end bags is trademark. Trademarks are used by consumers to determine the origin of a specific good. It helps the consumer connect past good or bad experiences and his or her feelings and beliefs towards a brand. This can be words (Gucci), logos (Givenchy), very specific patterns (Burberry), or strategically placed colors (Louboutin). Trademarks do not protect innovation, function or even the expression of creativity. Instead, it protects the business’ reputation and allows customers to be certain they are purchasing from the company then intend to spend money to wear their goods.
Fashion often blurs the lines between a designation of origin and aesthetics. Sometimes the trademark becomes integrated into the product. Also, it doesn’t preclude others from using certain aspects in a non-trademark manner. Burberry has a specific plaid, but that doesn’t stop others from using other plaids. In Christian Louboutin S.A., et. al. v. Yves Saint Laurent America Holding, Inc., et. al., the district court found that the red sole of a shoe cannot function as a trademark. Fashionistas and the Second Circuit Court of Appeals disagreed. Rather, the bright red sole does, in fact, send the message that the shoe is indeed “a Louboutin.” There are limits, however. For example, Yves Saint Laurent could have a red sole when the entire shoe is the same color red. But when the sole is a different color than the rest of the shoe, then that bright, lacquered red means Louboutin was its origin.
Designers have to determine which of these protections make sense for each design and product and for the business in general. Patents are not cheap, easy, or fast to obtain, but they can give broad protection. Copyrights are generally inexpensive to obtain, but are easily circumvented. Ultimately, none of the registrations will mean very much if the designer is not willing to enforce the rights obtained with registration. Each designer must look at the costs, breadth and duration of the various protections available and compare that to the return on those investments. In the meantime, we will be able to review what’s gone down the runway, discuss what is good and bad, and figure out what works in the real world.
DISCLAIMER: The information provided is for general informational purposes only. This post is not updated to account for changes in the law and should not be considered tax or legal advice. This article is not intended to create an attorney-client relationship. You should consult with legal and/or financial advisors for legal and tax advice tailored to your specific circumstances.