By James Stewart

While New York has Fashion Week, September has proved to be Fashion Month in the Senate. On September 10, 2012, Senator Charles Schumer (D-NY) introduced S.3523 the “Innovative Design Protection Act of 2012” (“the Bill”).  The Bill, aimed at extending intellectual property protection to fashion designs, was approved by the Senate Judiciary Committee on September 20, 2012.


It is no secret that intellectual property protection for fashion designs has been a heavily debated issue in the legislature since 2006.  While one would think the fashion community would be ecstatic about protection for original designs and creativity, in an industry with diverse stake holders, many are concerned about the potential implications of this Bill and its effects on fashion designers’ rights.

Although exceptional limits exist in each of the methods fashion designers may use to try to protect their designs, fashion designers today rely primarily on trademark, patent, and anti-counterfeiting laws as the main sources of protection for their intellectual property.  Additionally, fashion designers are afforded very limited protection under the current iteration of the Copyright Act.  Trademarks are used to protect the integrity of the designers’ brands.  Patents are useful for some fashion designs, although due to the lengthy application and registration process, the need for a patent is often obsolete by season’s end.

The proposed pieces of legislation to-date have tried to provide protection for fashion design under the Copyright Act, calling for a three year term of protection for original articles of apparel.  Under these proposed bills, the standard for copyright infringement would be articles which are “substantially similar” containing only minor or trivial differences. 

This standard has caused concerned across a wide spectrum of fashion designers, from innovative designers to the more conservative designers, for its practical challenges in enforcement.  Fashion is a collective effort of designers who receive inspiration from all aspects of their daily lives, generations past, and other designers.  An essential element in fashion is recycling and renovating.  Therefore, designers are not only concerned about protecting their own designs, but also the risks associated with their own designs in the future.  


My September 5, 2012 article, “2nd Circuit Says Yes to Louboutin’s Red Sole Trademark,” poses the question: “is this decision a true victory for Louboutin or YSL?”  Tamlin H. Bason’s article in Patent, Trademark & Copyright Law Daily seems to suggest that both sides are claiming victory. 


Reproduced with permission from Patent,Trademark & Copyright Law Daily, (Sept. 12, 2012). Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) <>

By Tamlin H. Bason 

Both parties claimed victory after the U.S. Court of Appeals for the Second Circuit Sept. 5 determined that Christian Louboutin’s trademark on red soled shoes was valid and that Yves Saint Laurent’s monochrome red shoe did not infringe the registered mark. Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc., 2d Cir., No. 11-3303-cv, 9/5/12).

Continue Reading Both Sides Claim Victory as 2nd Cir. Upholds Louboutin’s Mark, Says YSL Didn’t Infringe

Companies are becoming increasingly innovative in promoting and conducting contests and sweepstakes via social media sites such as Facebook, Twitter, Pinterest, and Instagram.  However, companies engaging in social media contests or sweepstakes must ensure that their promotions are in compliance with federal and states laws as well as the specific platform guidelines, and be particularly careful not to inadvertently organize their promotions as an illegal lottery.  Avoiding the creation of an illegal lottery is one of the biggest challenges of organizing a social media promotion.

Continue Reading Avoiding Illegal Lotteries in Social Media Promotions

Right on time for New York’s Fashion Week, the United States Court of Appeals for the Second Circuit ruled today that “Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe” has acquired secondary meaning as a distinctive source-identifier for Louboutin’s luxury brand.  More than one year after a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision invalidating Louboutin’s red sole trademark, the Second Circuit has rendered Christian Louboutin’s iconic “Chinese red” soles to be a valid, protectable, and enforceable trademark.

Continue Reading 2nd Circuit Says Yes to Louboutin’s Red Sole Trademark

Reposted Client Alert 

We are delighted to introduce DLA Piper’s newest blog, Technology’s Legal Edge™, which addresses the global issues facing companies in the areas of e-commerce and social media, IT sourcing, outsourcing, and privacy

Continue Reading New Technology, Privacy and Sourcing Blog: Technology’s Legal Edge

By John Wilks and Damian Herrington, DLA Piper UK

The Internet Corporation for Assigned Names and Numbers (ICANN) has just announced that the target “Reveal Day” for its new generic Top Level Domain (“gTLD”) program – the day when the list of gTLDs that have been applied for is announced – will be 13 June 2012. This date will be eagerly awaited by brandowners, both those who have applied to register their brands as gTLDs (and will want to see whether anyone has applied for similar domains which may be in competition with their application), and those who may wish to object to a gTLD application which is confusingly similar to their brand.



One of the packed meetings at the United States-China Adjudication Conference was the trademark breakout session, conducted for the most part in Chinese, with simultaneous translations. Several high-ranking judges in the IPR Tribunal spoke on trademark developments. From a U.S. perspective, there is a keen interest in the protection of well known trademarks either registered or unregistered in China. 

Continue Reading Trademark Breakout Session on Enforcing Rights in China