Innovative Design Protection Act (IDPA)
In September, the Senate Judiciary Committee approved the Innovative Design Protection Act (IDPA), which would extend copyright protection to articles of apparel that “(i) are the result of a designer’s own creative endeavor; and (ii) provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” S. 3523, 112th Cong. § 2 (2012). The IDPA protects the artistic elements of a design expressed as a whole, including its ornamentation. Thus, for example, neither pockets on a pair of trousers nor the collar on a button down shirt would be eligible for protection under the IDPA, since pockets and collars are mere components of a larger design. Conversely, a more original and less clearly functional garment, such as an intricately and uniquely detailed jacket with pointy shoulders, might be protected under the proposed IDPA.
The term of protection would last for three years, in contrast with the life plus seventy year term of a typical copyright by an individual author. Additionally, the IDPA would require a design owner to provide written notice to an accused infringer twenty-one days prior to instituting an action.
Copyright Protection in the Courts
The IDPA is, in part, a response to the limited fashion design protection afforded under the Unites States Copyright Act (the “Act”). Fashion designs arguably fall under 17 U.S.C. § 102(a)(5) of the Act as “pictorial, graphic, and sculptural works.” However, because such works are often considered useful or utilitarian articles, they are only copyrightable as pictorial, graphic, or sculptural works if their features “can be identified separately from and are capable of existing independently of, the utilitarian aspects of the design.” 17 U.S.C. § 101.
Thus, e.g., on October 15, 2012, the Second Circuit in Jovani Fashion, Ltd. v. Fiesta Fashions, No. 12-598-cv (S.D.N.Y. Oct. 15, 2012), decided that a design for a sequined prom dress was not copyrightable. The court stated, “[c]lothing, in addition to covering the body, serves a ‘decorative function,’ so that the decorative elements of clothing are generally ‘intrinsic’ to the overall function, rather than separable from it.” Id.
Despite the holding in Jovani, designers may still seek protection for fashion designs where such designs are physically separable or have independent aesthetic value. The landmark case Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980), which held belt buckles copyrightable because they were independent artwork, still remains citable precedent. The Copyright Office has also expressly recognized weaving designs, fabrics, textiles, lace designs and tapestries as “pictorial, graphic, and sculptural works” which are protectable. COPYRIGHT OFFICE, CIRCULAR 40, COPYRIGHT REGISTRATION FOR WORKS OF THE VISUAL ARTS (2012).
Design Protection under Trademark Law
Trademark law may also provide recourse to designers seeking protection against both counterfeiters and copycats.
Trade dress is a type of trademark in the form of packaging or product design. Trade dress is protected by law if it is inherently distinctive or indicative of source, provided it is not functional and does not confer trademark rights over an aspect of a product that would create a non-reputational advantage.
In September, the Second Circuit discussed trade dress in the context of colors in Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012). It held that a single color sole may indeed serve as a valid trademark when used in combination with a different color upper shoe. Read the full decision.
Louboutin and Saint Laurent are not the only big name designers to have recently clashed over their respective trademark rights. This past spring, a three-year trademark infringement battle between Gucci and Guess came to a close. A New York district court held that Guess infringed both Gucci’s trademarked intertwined “G” design and their green and red stripes, and therefore awarded Gucci profits and a permanent injunction against Guess. Gucci America, Inc. v. Guess?, Inc., 858 F. Supp.2d 250 (S.D.N.Y. 2012).
As for counterfeiting cases, some trademark owners have begun to seek relief from secondary infringers in addition to direct infringers. Thus, rights holders have sought to hold landlords who knowingly rent retail space to counterfeit vendors vicariously liable for counterfeiting. In January, a district court in Texas found proprietors of a flea market contributorily liable to Louis Vuitton for the direct trademark infringement of one of its vendors. Louis Vuitton Malletier v. Eisenhauer Road Flea Market, No. SA-11-CA-124 (W.D. Tex. Jan. 31, 2012).
Louis Vuitton was successful in another notable trademark infringement suit when the Second Circuit upheld a three million dollar infringement judgment against one of the largest importers of fake luxury goods from China. Louis Vuitton Malletier S.A., v. LY USA, Inc., 676 F.3d 83 (2d. Cir. 2012). The decision marked a huge win for plaintiff Louis Vuitton and may have some real deterrent effect within lower Manhattan’s infamous Canal Street, an area where counterfeits are brazenly sold to knowing and unwitting consumers.
Design Protection under Patent Law
In addition to copyright and trademark law, patent law presents another potential avenue of fashion design protection.
Recently, Lululemon, a Canadian company known for its yoga apparel, sued fashion house Calvin Klein. Lululemon Athletica Canada Inc. v. Calvin Klein, Inc and G-III Apparel Group, Ltd., No. 1:12-cv-01034-SLR (D. Del. filed Aug. 13, 2012). Lululemon claimed that Calvin Klein knowingly infringed Lululemon’s three design patents covering their “Astro” style pants, “by making, using, offering to sell, selling and/or importing pant products that embody the Patents-in-Suit.” Id. However, the parties settled the case on November 20, 2012.