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Don’t Copy My Blue Suede Shoes: Copyright Protection for Fashion Designs

Written by Beth Hutchens
Hutchens Law Office, PLLC
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Posted: September 23, 2010 @ 2:25 pm
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As I discussed briefly a couple of weeks ago on my blog, in the United States, the current copyright statute (Title 17, United States Code) does not offer protection to fashion designs. This is because, among other things, one cannot gain copyright protection for anything utilitarian. Also, copyright protection is only offered to original works of authorship. This is a complicated topic, but the best way to sum it up is that the standard for “original” means it can’t be “routine” or “mundane”.  Historically, fashion designs have been deemed utilitarian because one cannot sever the unique design features from their functionality. For example, a particular type of sleeve may have some unique design aspects to it, but its primary function is to cover an arm.   Further, it would be difficult to argue that a purple skirt is original. Yes, fashion designers, even if it’s Versace- a purple skirt is just not original. So, in addition to myriad other arguments, including if a design is actually a work of authorship, there is a question as to whether a fashion design is sufficiently original for protection.  But new legislation pending proposes to change that.

The fashion industry claims it loses millions of dollars in revenue every year because of copycats buying one very expensive handbag or shoe or other item, deconstructing it, farming it out (usually to some factory in Asia), and making copies of it to be sold for a fraction of the price. There is now proposed legislation attempting to address and put a dent in the very lucrative knock-off market. Enter the “Innovative Design Protection and Piracy Prevention Act” (S.3728), courtesy of Senator Chuck Schumer (D-NY).  Now, imitation is the no longer the sincerest form of flattery, it’s the basis for a lawsuit.  Swell.  Sen. Schumer is proposing to amend Chapter 13 of the Copyright Statute- Protection of Original Designs.  (See the text of his proposed amendment)  Fortunately, dear readers, I’m here to make sense of this, or at least give it a hero’s try. It is copyright, after all, and I can only do so much.

First, let me begin by pointing out that I’m not convinced fashion designs merit copyright protection at all.  But instead of starting with that very important step, the bill just kind of glosses over that whole concept and makes the decision for us.  So for the sake of argument, we’ll skip that part and delve into what the bill does address.  The proposed amendment doesn’t allow protection for designs already in the public domain, so don’t go rushing out to copyright denim jeans just yet.  But it does allow protection for the “appearance as a whole of an article of apparel, including its ornamentation”, which includes placement of original and non-original elements. It doesn’t make color a determining factor, but it does use the term “substantially identical” which the statute defines as “so similar in appearance as to be likely mistaken for the protected design, and contains only those differences…which are merely trivial”.  Have fun with that, Federal Courts!

Most importantly (and not really being discussed by anyone) is the fact that this amendment will not require designers to register their designs with the Copyright Office.  Protection for fashion designs would be automatic.  Um, how do we square that with the fact that registration is a prerequisite to sue for infringement?  And why do fashion designers get a clear pass when everybody else still has to register?  The proposed amendment will give the fashion designer the power to make the initial determination that her designs are unique,  distinguishable, non-trivial, and non-utilitarian.  Take a moment to let that one sink in and think of where it will lead.  This blatant attempt to circumvent long standing and very important standards for copyright protection should have you have you screaming “Danger Will Robinson!”

The broadest interpretation and application of this law (if enacted) is that it could preclude lesser known and much smaller designers from marketing an article that is only slightly similar to another design.  So, the designer who came up with a particular style of dress would be the only person permitted to sell it at least for a few seasons.  Anything even close to it could subject another designer to an infringement suit.  If this legislation existed back in the 70s, and if she had her way, only Diane Von Furstenberg would have been able to make and sell a wrap dress.  I wonder what Claire McCardell would have to say about that if she were alive today?  But I digress.   The bill only allows protection for three years, which isn’t very long, but anyone familiar with the evolution of the copyright term of protection can see where this will end up.  Sorry for all of you off-the-rack plebeians out there. You better find a way to cough up that $300 or no wrap dress for you.

The drafters of the bill did throw us a bone.  Folks sewing at home for their own personal use can go ahead and copy designs without fear.  Oh, and even though a Plaintiff doesn’t have to register her design to sue, she still has to plead her case with particularity, meaning  she will have the burden of proof to show her design is protected in addition to the new-and-improved just-for-fashion elements of copyright infringement.  Aaaaaaand we’re back to the problem of not requiring registration and letting the fashion designer decide that her design merits copyright protection.   So let’s have some fun and give this a good ol’ law school essay try.  Here’s our hypo.

Fashion designer, Englebert, is up late one night watching QVC.  He notices, much to his chagrin, that fashion designer Gladys is peddling a hat that looks a lot like his iconic turtle hat from last season.  Englebert’s hat is made of top of the line Dacron® and takes the shape of a turtle so it looks as though the wearer has a turtle perched on her head.  The turtle hat is designed so the head of the turtle is directly over the wearer’s forehead.    Gladys’s turtle hat is made of high quality pleather and is made to be worn so the tail of the turtle is directly over the wearer’s forehead.  The hats have identical color schemes and the turtles are nearly indistinguishable.    Gladys’s turtle hat is registered with the US Copyright Office; Englebert’s is not.  Discuss.

And here’s the rule statement I came up with in my pretend law school essay.

“To qualify as a fashion design, an article must be unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.  Once a plaintiff can show the article is unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles, she must then show that the articles are so similar in appearance as to be likely mistaken for the protected design, and contains only those differences…which are merely trivial. “

Sorry, I just don’t have the time or energy to complete that IRAC, but I suspect you can see where things are going.

Riddle me this.  Why is this amendment even necessary? What problems does it solve that current intellectual property laws and jurisprudence do not?  Why aren’t the current remedies in copyright and trademark sufficient?  Many knock offs like the fake Fendi®, Coach®, Chanel®, and Louis Vuitton® handbags blatantly include the designer’s trademark on the knock-off.  Kids, there is a big difference between copying a popular shape of a handbag and shamelessly making the exact same handbag and passing it off as the real thing.  And the remedies for this land squarely in trademark law.  If Louis Vuitton has a problem with a handbag that doesn’t bear his signature LV but looks like one of his bags, current copyright law, or at least I thought, adequately addresses this issue with its functionality test.  Granted, it’s not the easiest analysis and is entirely subjective, but why is this legislation necessary when there appears to be adequate protection already in place? I wonder if it has something to do with the fact that the remedies for copyright infringement are easier to prove and much harsher than trademark infringement? Can you imagine the double whammy of a case where a designer can prove trademark infringement of the logo AND copyright infringement of the handbag?  It makes my head spin.  But, dear readers, if you take nothing else from this week’s ramblings, remember this. Intellectual Property law exists to encourage innovation, not to protect profit margins. The bill is admittedly an attempt to put the kibosh on knock-offs because they cost the industry money. So there that is for you.

Still, there are some aspects of fashion design that could be unique, original, and non-utilitarian.  Haute couture by definition is one-of-a-kind. And much of what is seen on the runway is never intended to be sold in retail stores or to the masses. Moreover, some couture is truly amazing and more akin to artwork than a dress, so it’s difficult to argue that it isn’t entitled to at least a little bit of recognition.  How can one conclude that a unique, one-of-a-kind dress that is only worn once (if ever) is mundane and utilitarian?  Why doesn’t the proposed amendment just deal with that instead of the really broad and very weird attempt to redefine copyright law?

I’m of the opinion that there is room for some sort of copyright protection for a unique design, albeit, under very rare and specific circumstances.  Copyright protection for a registered, custom made, one-of-a-kind article?  Sure, why not.  I’ll even give you the three years.  Do not get me started on the life of the author plus 70 years nonsense.  Don’t even go there.  Provided the term of protection stays at three years (preferably less), it would permit the original designer to do what she wants with the article but after a time permit other designers to take a crack at the concept.  A limited amount of protection for a design that meets the requirements for originality, uniqueness, and non-functional wouldn’t require us to redefine copyright, overburden the courts, discourage innovation, or favor an industry’s profit margin.

But copyrighting a wrap dress? Seriously?  The problem is that this seems to be what the proposed amendment is attempting.  Besides, even the big-name designers admit that they buy clothes off the rack at stores for the express purpose of copying. The bill’s proponents have said that it promotes creativity, but if you can make the argument that precluding other designers from making a certain article of clothing will promote progress, I’d love to hear it.  Plus, very little of the fashion industry’s money goes to the individual designer, anyway, and only the large fashion power houses can afford a cadre of copyright lawyers.  Call it a hunch, but I doubt a single designer selling her clothes at a boutique in Plano, Texas has Fulbright & Jaworski on speed dial.  Most importantly, intellectual property laws exist for the benefit of the public, not the industry.  So, I guess we still haven’t figured out who exactly will benefit the most from this bill or what it will accomplish.  Or have we?

I’ll leave you with this.  The proposed amendment isn’t a start; it’s not even a step in the right direction.  I suggest we start over and first figure out if, and to what extent, fashion is copyrightable before we tackle infringement.  The proposed amendment hasn’t passed yet but it’s predicted to.  Still, with climate change, unemployment, the economy, immigration, the war in Iraq, and the mid-term elections coming up, I think Congress may have bigger fish to fry than this one.  Let’s hope it gets tabled so we can start over and do it the right way.


About the Author

Beth is an Intellectual Property attorney licensed to practice before the United States Patent and Trademark Office and the State Bar of Arizona. She received her B.S. in Biological Sciences from CSU, Sacramento and her J.D. from Whittier College School of Law, where she earned a Certificate in Intellectual Property. She enjoys being a solo practitioner in Phoenix, Arizona.

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