Finnegan's monthly review of essential decisions, key developments, evolving trends in trademark law, and more.

October 2012 Issue

Summary of the Innovative Design Protection Act of 2012

S. 3523, the Innovative Design Protection Act of 2012, introduced into the Senate on September 10 by Sen. Charles E. Schumer (D-NY), is the latest in a series of efforts by Congress to extend intellectual property protection to fashion designs.  On September 20, the Senate Judiciary Committee approved the bill on a voice vote.

S. 3523, like previous fashion design protection efforts from Congress, revises design protection under the Copyright Act, 17 U.S.C. § 1301 et seq., by creating a three-year term of protection for original articles of apparel.  Items of apparel that are “substantially identical,” that is, “so similar in appearance as to be likely to be mistaken for the design, and contain only those differences in construction or design which are merely trivial,” would be liable for infringement. 

To address concerns raised by the fashion industry and the American Bar Association that application of the “substantially similar” standard would lead to “overreaching” in designers’ enforcement efforts, S. 3523 contains provisions that limit infringement-enforcement options, as well as an exemption for certain website-related activities.  Specifically, S. 3523 adds subsection (d) to 17 U.S.C. § 1306, requiring that the “owner of the design shall provide written notice of the design protection to any person the design owner has reason to believe has violated or will violate this chapter.”  S. 3523 requires a twenty-one-day waiting period following this written notice before the designer may initiate an infringement action, and any profits sought by the designer would be limited to infringement beginning on the date the infringement action was filed—not the date notice was provided to the alleged infringer. 

S. 3523 further allays concerns of “overreach” by providing an exemption from liability to certain “acts of third parties” relating to websites, including “(1) the provision of a telecommunications service, or of an Internet access service or Internet information location tool (as those are defined in section 231 of the Communications Act of 1934 (47 U.S.C. 231)); or (2) the transmission, storage, retrieval, hosting, formatting, or translation (or any combination thereof) of a communication, without selection or alteration of the content of the communications, except that deletion of a particular communication or material made by another person in a manner consistent with section 230(c) of the Communications Act of 1934 (47 U.S.C. 230(c)).”