It’s March, and in Charleston thoughts turn to longer days, spring break and, relatively recently, fashion. The tents go up in Marion Square mid-month for fashion fans to enjoy a week of shows featuring new designs and clothes from local stores. It is a lot of fun and, actually, very big business, considering that the fashion industry in the United States alone employs more than 4-million Americans and accounts for $350 billion in annual retail sales.
But fashion design is also art, and as an intellectual property lawyer who works to help clients protect rights in artistic works, I have been watching the development of a law to protect the original designs of three-dimensional clothing and footwear in the United States. Unfortunately, the current system of intellectual property laws – consisting of patent, copyright and trademark – does not provide a one solution for designers to protect their work from being blatantly copied.
Rumblings about coming up with a new system have been ongoing in the fashion industry for a while, and, since 2006, several bills have been proposed. It wasn’t until last fall, however, that a piece of legislation got the support of the American Apparel & Footwear Association and the Council of Fashion Designers of America, two national trade groups influential in the American fashion industry.
In October 2012, the leadership of these associations called the Innovative Design Protection Act (IDPA, S. 3523) introduced by Sen. Charles E. Schumer, D-N.Y., a “practical and workable approach to the real but narrow issue of ‘design piracy,’” which is understood to be the primary concern driving development of the law. The IDPA, also called the “Fashion Bill,” was placed on the Senate legislative calendar December 20. It was reported by Committee but unfortunately died at the end of the last session. It won the support of the AAFA and the CFDA with its specific focus on three key sets of provisions:
First and primarily, the bill proposed three years of protection to fashion designs that are truly new and original; i.e., those that have never been seen before. This protection would extend to the entire article of clothing but would not cover any individual part of a garment like the design of a sleeve or a pocket. It prohibited the creation of “substantially identical” copies of protected designs or anything close enough to likely be mistaken for the original.
Second, the Fashion Bill contained a “heightened pleading standard” or certain required content for filings to try to cut back on frivolous lawsuits. More simply stated, a designer who wants to claim piracy – or “infringement” – of a design would be required to plead facts in the complaint demonstrating that the design was protected, how it had been infringed and how the design was available for the defendant to see or have knowledge of it for the copying. And, in addition:
- The bill clarified that the facts of availability should be specific enough to give rise to a “reasonable inference” that the defendant had access to the design.
- The bill proposed severe penalties for misrepresentations in the initial filing. In addition to this standard, a plaintiff would have to provide written notice of belief of infringement to the believed infringer and would have been prohibited from filing any lawsuit or accrual of any damages until 21 days after such notice is provided without any cure.
- In regard to defense, the bill allowed an accused infringer to argue that the design at issue is an independent creation or that the protected design is actually already in the public domain, meaning the design is already widely known in the world of fashion and not protectable (the bill lists specific examples of cargo shorts, denim jeans and pencil skirts).
Third, the Fashion Bill specifically lifted any liability from regular consumers who buy the infringing design and home sewers who design and make items for personal use. It also eliminated the possibility of liability for website hosts by making clear that merely providing internet sales facilities is not an act of infringement.
Since this bill wasn’t introduced until September 20, 2012, near the end of the Congressional session, expectations for it to get passed were pretty low. Nonetheless, industry observers were invigorated by the introduction and, in large part, more satisfied with this bill’s text than any previous bill.
So. Is there anything a designer can do until the Fashion Bill passes?
Currently, a designer can register copyrights for original prints and patterns, unique color arrangements and novel combinations of elements used on an article of clothing or footwear as well as any protectable design elements that can be separated, either physically or conceptually, from the utilitarian aspect; i.e., any useful and functional aspect of the article. A designer can also file a patent for new and non-obvious ornamental designs of functional items. Finally, a designer can federally register for trademark and/or trade dress protection of a brand name, logo, packaging and any other element that identifies the garment or article as belonging to a particular designer’s house or line.