Fashion designs are copied freely by many. Once Michelle Obama’s Jason Wu inauguration gown appeared on TV, knockoffs soon appeared in stores that offer them. The problem is that current laws offer little intellectual property protection for fashion designs. Let’s take a look at why:
Trademarks protect the designer’s use of the logos, name, or other symbols on fashion items. This includes the polo symbol for Ralph Lauren, or Louis Vuitton’s “LV” abbreviation. However, trademark law only protects these symbols and names, and does not protect against the clothing’s overall design.
Trade dresses protect the visual appearance of a product. Often, it protects the unique shape or look and feel of the product, like the shape of the Gatorade bottle or the style of the cover of Time Magazine. Trade dress sounds great for protecting the overall clothing design of a handbag or skirt.
The problem is that the United States Supreme Court severely limited the extent of trade dress protection. In Wal-Mart Stores, Inc. v. Samara Brothers, Inc., the court ruled that trade dresses are only available to products that have acquired distinctiveness. A product is distinct “if it has developed secondary meaning, which occurs when, in the minds of the public, the primary significance of a [mark] is to identify the source of the product rather than the product itself.” Wal-Mart Stores v. Samara Bros., 529 U.S. 205, 211 (2000). This means that to obtain a trade dress on a fashion design, the average consumer must be able to identify the designer just by looking at the particular fashion design.
This is a very high standard. Can you tell who is the designer when you look at a pair of blue jeans? A black handbag with no designs on it, for example, would look too similar to other black handbags to be considered “distinct.” Thus, trade dress protection has not been effective in protecting fashion designs.
Patents are generally for technological inventions. A special type of patent, called a design patent, can provide protections for ornamental designs. These design patents also have to satisfy normal patent requirements in that the ornamental designs have to be novel and non-obvious. The non-obvious element is a high bar to meet, since the United States Patent and Trademark Office has to do an extensive search to make sure no one has used your design before or an obvious variation thereof.
Another big problem with patents is cost. Patent prosecution filing fees and attorneys’ fees can total tens of thousands of dollars. Not only that, patents take time. By the time you receive the patent, a trend or style may have passed. When you have a product line of 100 different dresses every season, it is impractical to obtain design patents on all of them.
Copyright law, which we often think of as protecting authors of books, also protects pictures, drawings, photos, and other works of art. The problem is the useful article doctrine in copyright law, which states that copyright protection only applies if the art is separate from the utilitarian aspects.
This doctrine is confusing and vague, as it is hard to determine what is truly considered “separate.” For example, if a t-shirt has a unique design on it, some would say this is not physically separable. After all, you cannot physically just cut out the design because then you would have a big hole in your t-shirt. Others take a more abstract approach, arguing that conceptually, the design on the shirt could stand on its own as a work of art. This doctrine is confusing and many cases have indeed held that clothing is too “useful” such that the function cannot be separated. For now, it looks like copyright protection will not work either.
Contract law, through the use of confidentiality agreements or non-disclosure agreements, may be useful in keeping your designs secret. However, this only lasts until you open it to the public. Once the public sees it, the design may be lost.
Some other precautions may be taken. Many designers and companies put up signs asking customers not to take pictures in the store. Early in the development, you can ask photographers to sign an agreement not to copy or share. Other fashion companies ask that their buyers to agree not to make further copies or similar copies of their designs.
For now, fashion designers face great difficulties in protecting their designs, leading them to often come out with new ones and to create new trends. In Europe, the laws provide that designers may obtain protection for 3 years if unregistered, and 25 years if registered. The fashion industry have been fighting for decades here in the United States, with over 80 proposed amendments since 1910, though all have failed. The current proposal (Design Protection and Piracy Prevent Act) calls for designers to register their designs within 6 months, but neither versions of the bill look optimistic as both have been placed on calendar for over a year with no action taken.