Fashion Week San Diego is this weekend—one of the few fashion shows open to the fashion industry and the general public! Fashion shows are exhilarating. As an intellectual property (“IP”) attorney, however, fashion shows are also nerve-racking. Fashion shows mean designers are showing their designs publicly. Some designs are brand new, never-been-seen-before lines. And to make sure the designs are protected to the maximum extent possible, it is essential to take certain steps with your IP attorney before they are disclosed publicly.
IP is important for every business, and is especially important in the fashion industry for several reasons. Generally, IP rights enable the owner to exclude others from doing something. For example, a design patent confers the right to prevent others from making, using, selling, offering for sale, or importing products covered by the design patent. Similarly, a trademark owner can prevent others from using a confusingly similar trademark that is likely to cause consumer confusion. Excluding, or at least reducing, competition provides an advantage to designers, especially in the fast-paced world of the fashion industry where trends can be fleeting and competition can be fierce. It can be difficult to secure broad IP protection for fashion designs with a short, seasonal product life. Utilizing different types of IP rights to prevent others from copying your product for its short life cycle, however, can be crucial to its success. IP protection is critical for long-lasting, iconic designs, such as the Hermes Birkin Bag or Louboutin’s red-soled shoes. In addition, a growing 3D printing industry is expected to make copying designs even easier and quicker, which will make IP protection even more important.
IP rights also enable the owner to enter into licensing agreements and other business deals. Investors and licensees expect a sophisticated company to have IP rights as part of their business assets and having such assets can affect the valuation of a brand. Additionally, devoting resources towards IP protection portrays to potential business partners that you and your company are organized, prepared, and would make a good partner.
When we discuss IP protection with new designers and start-up businesses, we often hear misconceptions about IP that can be detrimental to the success of the designer or company. Below we discuss some of these common misconceptions.
Misconception #1: All Intellectual Property is the Same—FALSE
We often hear from designers, “I have IP protection.” What they really mean is that they filed an application to register one copyright. What they have not done, however, is develop or take the steps to register a protectable trademark, or identify and protect their unique and iconic designs by filing a design patent. All intellectual property is not the same and, depending on your business objectives, utilizing multiple types of intellectual property may be necessary to achieve your objectives.
Misconception #2: The “10%” Rule—FALSE
One common belief is that if a designer borrows only 10% or 20% of another design, or makes x-number of changes to the original, then the designer cannot get in trouble for copying the original design. This is false. There is no such thing as a 10% rule or a 20% rule. In a copyright infringement case, the Plaintiff only needs to show the copied design is “substantially similar” to the original. There is no “percentages” rule, and there is no rule indicating that x-number of changes is okay. Similarly, design patent infringement can be found if the accused design is “substantially similar” to the design claimed in the design patent. Trademark infringement can be found if relevant consumers are likely to be confused about the source or sponsorship of the product or service bearing the accused mark. Again, no percentages or number of changes are involved in these IP infringement standards.
Misconception #3: Fashion Designs are Not Copyrightable—FALSE
Another common misconception, (that we hear even from well-intentioned attorneys) is that fashion designs are not copyrightable. It is true that for a useful article to garner copyright protection, it must contain an original work of authorship that is conceptually separable from the useful article itself. However, this does not mean that all fashion designs are not copyrightable. Many of them are—courts have held things such as original placement of appliques on a camisole to be eligible for copyright protection, as well as chevron designs on a cheerleading uniform. Additionally, most original fabric designs are eligible for copyright protection.
Misconception #4: I Can Wait to Get IP Protection—FALSE
Fashion shows, social media posts, Kickstarter - all of these mechanisms for publicly disseminating information make IP attorneys cringe. Why is that? Because there are laws that might limit the availability of certain IP protection if designs are publicly disclosed prior to filing.
Take a design patent, for example. Design patents can be obtained for novel and aesthetic features of a useful article. Design patents can be very important for a designer’s iconic pieces because design patents can be used to protect the unique shape of an item, such as a shoe. Obtaining a design patent for a designer’s iconic pieces will protect those designs for 15 years. During that time the designs can acquire the secondary meaning necessary to obtain trade dress protection, and they can then be protected indefinitely. However, a designer will be prevented from obtaining a patent if she discloses the design to the public more than one year before filing for the design patent. In some countries outside of the United States, a designer can be prevented from obtaining a patent if she makes any public disclosure at all prior to filing.
As another example, trademark rights in most countries outside the United States are established via a “first to file” system. Unfortunately, it is not uncommon for unscrupulous actors to file trademark applications in other countries for marks they see in the United States. They can then prevent the designer from using her own brand when trying to enter the market in those countries. These trademark “trolls” may have no intention of ever using the mark, and may demand an exorbitant amount or money to sell or license the mark back to the U.S. trademark owner so she can do business in the country.
Lastly, statutory damages for copyright infringement are only available if the copyright owner obtains a registration before infringement occurs, or within three months of publication of the copyrighted material. Copyrights are relatively inexpensive and simple to obtain. Thus, get copyrights early and often for all of your business’s original works of authorship.
Misconception #5: If it Does Not Have a “©”, I Can Use It—FALSE
There used to be a law that required copyright owners to put a © on their products to claim copyright protection. However, that law was changed decades ago. Copyright owners are not required to use the © on copyrighted products, so it’s safe to assume that all original works of authorship are copyrighted. Ask permission before using somebody else’s design or look for designs that have creative commons licenses allowing the type of use needed.
As IP attorneys we caution all designers to take appropriate steps to protect your unique and creative designs. We also encourage designers to be creative and not seek inspiration in the designs of others. If you have any questions about how to protect your designs from being copied or to what extent you might be able to use a design without infringing others’ rights, please consult your IP attorney.