By: Job Seese (New York)

Our Spring 2011 issue discussed a pending U.S. legislative bill that would expand copyright protection to fashion designs – something that generally is not available under existing U.S. law.  Known as the Innovative Design Protection and Piracy Prevention Act (IDPPPA), the bill was first introduced in the Senate in August 2010.  However, the bill was never taken up by the full Senate and effectively died at the end of that Congressional session.  Currently, a legislative bill of the same name is pending before the U.S. House of Representatives Subcommittee on Intellectual Property, Competition and the Internet.  

The bill is the latest in a long series of legislative efforts to address the lack of a clear legal framework in the U.S. for protecting fashion designs against infringement, beyond patent and trade dress protections.  The bill also represents what can be viewed as a compromise position between the Council of Fashion Designers of America and the American Apparel and Footwear Association, wherein the interests of the creative designers have been balanced against those more focused on high volume manufacturing and distributing.

The IDPPPA would reverse decades of American case law and amend U.S. Copyright Office policy – by adding “apparel” and “fashion design” to the categories of creative work eligible for copyright protection.  Under the IDPPPA, copyright protection would attach automatically (that is, without any need for the designer to register the design with the U.S. Copyright Office) at the time of first public appearance and would protect designs from “substantially identical” copies for three years.

Jovani Fashion, Ltd. v. Cinderella Divine, Inc., a recent federal district court decision in New York, illustrates the vacuum that the IDPPPA is intended to address.  The case involved a copyright infringement action brought by a manufacturer of prom dresses, Jovani Fashion, Ltd. against several competitor manufacturers and retailers that Jovani alleged were manufacturing or selling infringing designs.  The court held that Jovani failed to demonstrate that the dress design at issue was entitled to copyright protection.  

In reaching its decision, the court noted that, under existing U.S. law, clothing designs are classified as “useful articles” and thus “are largely unprotected by the Copyright Act.”  The court observed that design components of useful articles are eligible for copyright protection only to the extent that they “incorporate[] 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 court concluded that none of the elements of the dress design at issue were “physically or conceptually separable from the dress as a whole.” 

The Jovani decision illustrates the need for greater legal clarity for the fashion and retail industry.  In determining whether the dress’s artistic features were separable from its utilitarian features – the so-called “separability test” – the court noted that the test “has proven difficult to apply, and courts ‘have twisted themselves into knots trying to create a test to effectively ascertain whether the artistic aspects of a useful article can be identified separately from and exist independently of the article’s utilitarian function.’”  By contrast, under the IDPPPA, the relevant test would simply be whether the dress contained original elements, or an original arrangement of elements, that provides a “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.”  If so, the dress would automatically qualify for protection under the Copyright Act as a creative work.  

According to proponents, the IDPPPA would provide designers with a more effective weapon against the cheap knockoffs that plague the industry, and industry trade groups have lined up in support of the bill.  Opponents, on the other hand, argue that the proposed law would encourage frivolous litigation and would drive up the prices of high-end apparel and accessories.  For now, however, the biggest impediment to passage appears to be not opposition to the bill, but Congress’s preoccupation with other priorities.