Authored by Anna Balishina Naydonov and Julia Anne Matheson
Miranda Priestly, the iconic Runway editor from the film, "The Devil Wears Prada," mocked her fashion-oblivious assistant for thinking that by wearing the "lumpy blue sweater" she "made a choice that exempts [her] from the fashion industry." In explaining how the fashion world works, Priestly quickly traced the story of the Oscar de la Renta cerulean gowns "that filtered down through the department stores and then trickled on down into some Casual Corner where" the fashion-oblivious assistant "fished it out of some clearance bin."
The point, undeniably, is that whatever is a big hit at the Milan fashion week this season will "filter down through the department stores" to some Forever 21 or H&M store in a matter of months. But why?
The simple explanation is that people see value—be that aesthetic or status-signifying—in clothing and accessory designs. Why does the existing US intellectual property framework not prevent third parties from copying Oscar de la Renta's cerulean gown designs or, for that matter, borrowing the hottest elements of Oscar de la Renta's designs and turning them into their own "designer-inspired" garments? What weapons, if any, do the Oscar de la Rentas of this world have against style pirates in the US market? Sadly, the current answer under US copyright law is not many.
The 'not-so-fashion-friendly' copyright law
Current US copyright law offers protection to clothing designs and accessories that is feeble at best. Originality and conceptual separability are the doctrines that, in most cases, prevent the extension of copyright protection to such items as, for example, a pair of pants or plumeria-styled jewelry.
Under copyright law "separability" requires the physical or conceptual independence of an article's utilitarian aspects from its artistic elements. In adopting the 1976 Copyright Act, the US House of Representatives emphasized that, "although the shape of an industrial product may be aesthetically satisfying and valuable, the . . . intention is not to offer it copyright protection . . . [u]nless the shape of [the] . . . ladies dress . . . or any other industrial product contains some element that, physically or conceptually, can be identified as separable from the utilitarian aspects of that article."1 It is, however, exceptionally hard (if not impossible) to physically or conceptually separate artistic elements from utilitarian when it comes to the shape of clothing items such as a dress, a suit or a pair of pants.
Originality is another hurdle that often precludes the extension of copyright protection to clothing and accessory designs. For example, in Cosmos Jewelry Ltd v Pro Sun Hon Co,2 the plaintiff claimed copyright protection in a line of gold jewelry depicting the plumeria flower. The court refused to extend copyright protection "for [plaintiff's] representation of the plumeria flower as having five petals slightly overlapping, slightly longer than they are wide and with slightly pointed tips, as all of these features occur frequently in natural plumeria flowers."3 Likewise, the court refused copyright protection for use of a "sand-blasted" and "high-polish finish on the plumeria body and petals because these finishing techniques "are 'standard, stock or common' to the medium of gold jewelry making—ie, they are 'scenes a faire'."4 Most designer creations consist of elements or a combination of elements—eg, sleeves, zippers, pockets—that are "standard, stock or common." So unless we are talking about Lady Gaga's VMA 2010 meat dress with matching flank shoes and purse, it is a truly difficult task to find a gown, a blouse or a purse that is not based largely upon earlier designs already in the marketplace.
Textile and leather prints are one of the few areas of apparel and accessory designs that enjoy the protection of US copyright law. Think unique EMILIO PUCCI printed silk fabrics or Stephen Sprouse for Louis Vuitton graffiti/rose prints for textiles and leather. Unlike the combination of such common elements as, for example, sleeves, a color, and buttons, these highly creative prints are true works of art that conceptually stand out from any utilitarian aspects associated with the design of a scarf or handbag. So, despite all of its limitations, copyright remains a weapon that offers some protection to Haute Couture’s arsenal in its battle with the style pirates.
"Dolce & Gabanna, Fendi and that Donna"
Labels matter. Writing this article on Twitter's fifth birthday got us thinking that today's world pretty much mandates squeezing any piece of information into 140 characters. The famous 140 characters is a consumer’s attention span, and it is also the way news is shared, revolutions are born and cultures are gradually transformed. And in this world, five characters on a wristwatch—ROLEX—do a better job at conveying information about a person's taste and social status than pages of written text.
While not without its own limitations, US trademark law still offers one of the most reliable avenues of protection for apparel and accessory designs, providing protection against the most egregious forms of style piracy, such as counterfeits or blatant misappropriation of well recognised designs.
Trademarks, which come in various shapes and forms including words, symbols, slogans, product packaging, product configuration, colors and even sounds and scents, are identification and marketing tools, goodwill repositories, and communicative devices that identify and distinguish one company’s products or services from its competitors in the marketplace.
Word marks, such as PRADA, MARC JACOBS and TADASHI SHOJI, are often the most valuable and, at the same time, vulnerable assets that fashion houses own, open to attack from both external and internal forces.
On the external side, while it may be near impossible for a competitor to copy the flawless cut of an Armani suit or the hand sewn corners of an ETTINGER wallet, it is far less complicated to slap a fake VERSACE label on a shameless knock-off. Anti-counterfeiting laws pound hard on these most egregious forms of trademark infringement with remedies including destruction of goods, significant statutory damages and even jail time.
The standard likelihood of consumer confusion test will also prevent forms of trademark infringement that are less blatant than counterfeit—eg, enjoin sales of ADIBAS sneakers or GEORGIO ARMANNIO gowns.
On the internal side, building awareness of your word mark, strictly policing uses by licensees and distributors, as well as enforcing your rights against unauthorized parties can make your fashion brand king. By contrast, fashion houses that failed to adequately oversee their licensees or undermined their image of exclusivity by offering their designer creations in the lower-end, market have ultimately ended up on the list of brands that have fallen from grace, including Bill Blass, Evan Picone and Pierre Cardin.
In those all important 140 characters: In fashion, word marks are key because they are loaded with crucial information about the brand identity and are easiest to protect/enforce.
Creative ways to bolster your brand: the power of the monogram and those red sole shoes
Labels alone will not always work. Recognizing that many consumers do not wish to turn themselves into walking billboards (with polo ponies that have grown from the size of that famous alligator to full on chest and belly frontal assault), fashion designers cleverly look for more subtle ways to emphasize their brand. Louis Vuitton, for example, has extracted the various designs that comprise its famous Monogram for individual use as jewelry charms, shoe ornaments, in fabric patterns for scarves and ties and as belt buckles. Additional crème-de-la-crème fashion brands that have taken a similar path include Chanel’s CC and Dior’s CD monogram logos, as well as the signature VERSACE medusa that has made its way into or onto a wide array of luxury household goods, such as furniture, linens, china and even wine corks. The more accessible luxury brands with mass appeal, such as COACH and DOONEY & BURKE, have offered similar product expansions using their D&B and CC monograms as patterns for handbag linings, scarves, ties, key chains, bracelets, wristwatch bands and an ever expanding array of other accessories.
However, it is not just about the clever use of a two-dimensional design (eg, monogram) in a three-dimensional way. How exactly do you protect unique product configurations, such as that hip THOMAS WYLDE slouchy rivet shoulder bag? The much talked about Fashion Bill (IDPPA) that would have offered short-term protection for original and novel fashion designs, no longer seems to have support in the wake of budget deficits, wars and natural disasters. As far as distinct product configurations go, the best choice fashion houses have is pursuing protection under both design patent and trade dress law.
Trade dress is the overall look and feel of a product that identifies the source of the goods to consumers. Examples of trade dress that the US courts have recognised as protectable range from the shape of a nail polish bottle, to restaurant décor, to the configuration of a guitar peg head. To receive protection, trade dress must be non-functional—ie, design features cannot be dictated by utilitarian considerations, such as cost of manufacturing or durability. Do those extra rivets on the shoulder strap prevent its separation from the bag? Does a particular configuration of a cap for shampoo bottles prevent spillage during transportation? These are the types of questions that need to be answered in the negative to pass the non-functionality test.
Additionally, trade dress must be distinctive. The US trademark law acknowledges two forms of distinctiveness—inherent and acquired. Inherently distinctive trade dress (eg, a truly unique shape for a perfume bottle) by its nature immediately stands out from the marketplace, immediately identifies the source of goods to consumers and, thus, is immediately protectable. By contrast, the Supreme Court held in Walmart Stores, Inc v Samara Bros. Inc,5 a case involving trade dress protection for a line of children's outfits, that product design trade dress (as contrasted with more traditional product packaging), can never be inherently distinctive. To receive protection, a product's configuration has to acquire distinctiveness or "secondary meaning", in the marketplace through targeted promotion, look-for advertising, commercial success and length of use. In other words, consumers have to be educated to recognize the particular product design elements as unique features identified with a single producer or source.
The Walmart holding and the "secondary meaning" requirements present trademark owners with a conundrum. On the one hand, a fashion house needs to aggressively promote its new design to receive the level of notoriety in the marketplace warranting the finding of acquired distinctiveness. On the other hand, the moment a fashion house starts heavily marketing its new design and the design shows signs of popularity, other designers and style pirates immediately copy the desirable elements, preventing the design from ever being associated with a single source—a cornerstone requirement of trade dress protection.
What's a trademark owner to do during the interim period of vulnerability? One possible option is to pursue a design patent—issued for 14 years and protecting only ornamental appearance of an article of manufacture (including ornamental features of fashion designs)—which offers an option to achieve some period of market exclusivity sufficient to develop secondary meaning; a critical prerequisite to secure potentially perpetual product design trade dress protection. How does a fashion house know in advance of release what designs might "stick" and be worthy of the expense of a design patent? They don't. Omniscience is rare commodity. As in the investment world, in the fashion scene sometimes luck rules the day.
Several designers have managed to obtain secondary meaning for their most renowned non-functional product design elements. The rectangular design attached to the flap of every Hermѐs BIRKIN handbag is one example of trade dress that made the Acquired Distinctiveness Hall of Fame.6 And, of course, next time you skim through Vogue and notice those red-sole heels, you will immediately know these are not just any pair of heels, these are CHRISTIAN LOBOUTIN. And that is some serious secondary meaning.
1 H.R. Rep. No. 94-1476, at 9 (1976).
2 Cosmos Jewelry, Ltd v Pro Sun Hon Co, 470 F. Supp. 2d 1072 (C.D. Cal. 2006), aff'd, 2009 WL 766517 (9th Cir Mar 24, 2009).
3 470 F. Supp. 2d at 1082.
5 Walmart Stores, Inc v Samara Bros. Inc, 529 US 205 (2000).
6 Registration No. 1806107 (under Section 2(f) of the Lanham Act).
Originally printed in Intellectual Property Magazine (www.intellectualpropertymagazine.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.