Copyrighting Fashion Design in the United States

Reprinted from La A La Mode,
DLA Piper’s Fashion, Retail and Design E-zine

By Ann Ford and Tom ZuticThumbnail image for law a la mode (c)

While design, patent and trade dress laws have long been used to enforce fashion rights, copyright laws in the United States have thus far been unavailable. Last summer, New York Senator Charles E. Schumer introduced legislation that could change this. In December, the Senate Judiciary Committee passed the Innovative Design Protection and Piracy Prevention Act, or Senate Bill S. 3728 (IDPPPA), and the next step is for the full Senate to vote on it.

The IDPPPA calls for the extension of copyright laws to the fashion industry, a commercial sector that has existed without protection in the United States to date. The legislation is supported by the American Apparel & Footwear Association (AAFA) and the Council of Fashion Designers of America (CFDA). The bill covers apparel, footwear, and accessories such as scarves, belts, and handbags.

The IDPPPA takes a very narrow approach to applying copyright law. First, IDPPPA will provide a three-year term of protection to new and original fashion designs commencing from the time the item is displayed publicly. Second, it will protect only “unique” designs that are truly distinguishable. Third, it will only cover designs created after its enactment, leaving earlier designs in the public domain.

Infringement will be reserved for “substantially identical” copies, which means “an article of apparel which is so similar in appearance as to likely be mistaken for the protected designs, and contains only those differences in construction or designing which are merely trivial.” Neither consumers nor retailers will be liable for inadvertently buying or selling illegal copies. The legislation also protects home designers, who will be permitted to copy a protected design for personal use.

As such, a plaintiff will have the burden of proof on these elements, and the legislation directs courts to consider a “totality of the circumstances” in determining whether a claim for infringement has been adequately pleaded. Some have noted that “totality of the surrounding facts and circumstances” may be similar to the “access-plus-substantial similarity” standard that is used in determining whether copying has occurred in other areas of intellectual property law outside of fashion designs.

Fashion designs will automatically be protected so that designers do not have to register designs with the U.S. Copyright Office (which costs about $35). This aspect of the IDPPPA is particularly noteworthy because most federal circuits require copyright registration as a pre-requisite to filing suit (although this standard was recently loosened in the 2010 Reed Elsevier v. Muchnick decision, which held that a copyright registration is no longer needed by all plaintiffs in a class action lawsuit).

To discourage lawsuits, IDPPPA sets out strict “originality” guidelines that a plaintiff must establish before raising a claim. These guidelines include the following three elements:

1) The plaintiff must prove its design had not existed previously; that it is wholly original. The plaintiff must prove it is “a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs”;

2) The plaintiff must prove a defendant’s design is substantially identical; and

3) The plaintiff must prove that the defendant had the opportunity to have seen the design before it was released for public distribution.

If a dispute does arise, a defendant will be entitled to show that the design in question was created separately and independently from the protected design or that it was copied from a design already in the public domain. Under the proposed law, damages are limited to a maximum fine of $50,000 in the aggregate and $1.00 per copy.

As is common with legislation, there remain subjective issues with the IDPPPA. Fashion styles are constantly evolving and inspired by the art of past designers. Thus, under this new law, it will likely be hard to argue that a new design had not existed previously and that it is wholly original. Also, only an article that is “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles,” qualifies as a fashion design. Although fashion is highly artistic, it is unclear how a court will decide what is truly non-trivial and non-utilitarian.

Fair use proponents – individuals and organizations alike – have opposed the IDPPPA, arguing that such protection could stifle fashion innovation. Fashion design, they argue, has thus far evolved effectively without copyright protection: as taste-makers introduce new concepts, which are imitated and sold cheaper, industry leaders are driven to remain distinctive and innovative. Others in the industry have chosen not go on the record to oppose, but may do so behind the scenes – or simply hope that the legislation stalls out.

In theory, the current version of the IDPPPA seeks to strike a balance between fashion designers and those seeking to “copy” fashion designs. Of course, the bill could be defeated or could simply die from inertia – with the new elections there are new priorities in Congress. But right now the debate remains hot – do we need copyright in the United States to protect fashion design?