New York Senator Charles Schumer recently introduced the Innovative Design Protection and Piracy Prevention Act, S. 3728, to create the first statutory protection specific to fashion designs. This bill, proposed to amend the US Copyright Act, provides intellectual property protection to apparel, footwear, accessory designs, eyeglass frames and handbags. If enacted, this law will provide recourse against illegal copying and allow designers to compete more effectively on the international stage and on the Internet.
In a pre-Internet era, copyright protection of fashion designs was less important because designers benefited from lead time before their designs, which were often seasonal, would be copied. The low costs of off-shoring and the Internet as an indispensable commercial tool have extinguished the designers’ lead time advantage and created an ideal environment for fashion pirates. The proposed legislation would significantly impact designers who, because of the speed of the Internet, sometimes see their original designs copied and sold worldwide before the original goods even reach the market. For example, copiers instantly send digital photographs from fashion shows in New York or red carpet events in Los Angeles to low-cost manufacturers for copying and the copied designs are available within days for worldwide distribution through Internet auctioneers and brokers.
Fashion designs currently stand in a negative intellectual property space. Apparel is considered a “useful article” and therefore ineligible for copyright protection. Moreover, fashion designs rarely meet the requirements for design patent protection and only textile designs that embody applied art or patterns are generally eligible for copyright protection.
Previous legislation granting protection specific to fashion designs has been unsuccessful because the proposed rights were deemed too broad and likely to stifle competition. This bill, however, provides limited intellectual property protection to new and original designs, and has the support of the Counsel of Fashion Designers of America and the American Apparel & Footwear Association. Fashion heavy weights, Narciso Rodriguez and Diane Von Furstenberg, moreover, support this legislation.
The Bill in Detail
If enacted, this law will protect fashion designs that are the result of a designer’s own creative endeavor and offer “unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles.” In particular, new and original designs will be protected against designs that are “substantially identical” in overall appearance to the original designs and to their specific elements.
In the case of a fashion design, the term “substantially identical” means an article of apparel so similar in appearance as likely to be mistaken for the protected design and that contains only trivial differences in construction.
Pleading With Particularity
The bill imposes a heightened standard of pleading, and requires a plaintiff to plead with particularity facts to establish that:
Plaintiff’s design is protected.
Defendant’s design infringes the protected design.
The protected design or its image was available in a location, manner and duration that it can reasonably be inferred from the totality of the surrounding facts and circumstances that defendant saw or otherwise had knowledge of the design.
New and original fashion designs would be protected for three years under the proposed law. Designs created before the enactment of the bill, however, would remain in the public domain.
Registration Not Required
Notably absent from the legislation is a registration requirement. Because fashion designs that meet the bill’s requirements are automatically protected, a significant burden on the US Copyright Office is avoided. Moreover, the absence of a registration step favors designers who would likely have difficulty registering every design that they publish or display.
Defenses and Exceptions
To successfully defend against a claim for infringement of a fashion design, a defendant must show that its design was created independently or is not substantially identical in overall visual appearance to the protected design or to its elements. If enacted, this law would recognize that a given design may be identical to a protected design while not infringing, provided that the subsequent design was independently created, a defense similar to that already available under applicable copyright law. The law would also recognize a “home sewing exception” for individuals who replicate designs for their own personal, non-commercial use.
The proposed bill allows the designer to recover damages adequate to compensate for the infringement, and the court is permitted, in its discretion, to increase such damages to an amount not to exceed US$50,000 or US$1 per copy. Alternatively, the court may award the designer the infringer’s profits from the sales of the infringing copies. Retailers and consumers, however, would not be liable for purchasing or selling unlawful copies of protected designs. The proposed legislation also permits injunctive relief which is perhaps the most valuable remedy for an original designer.
Internet Sales and Advertising
Most counterfeit traffic is the result of Internet sales and advertising. This legislation will reduce if not eliminate illicit Internet commerce because copiers will be threatened with liability for selling or advertising unauthorized copies of original designs.
Because of the heightened pleading standard, designers who want to assert their rights would need to have created and preserved records of their designs and the publication of their designs. Such records will undoubtedly have to include third parties’ site visits and downloads for all websites on which a design is displayed. To facilitate monitoring and tracking of downloaded fashion, designers will have to rely on embeds and other forensic tools.
Evidence of Consumer Confusion
Because the “substantially identical” test is similar to the likelihood of confusion test of trademark law, it could become necessary for designers to preserve evidence of consumer confusion between the protected and infringing designs.
Some argue that permissible copying of fashion designs fuels creativity and innovation. Moreover, purported “knock-offs” could arguably increase the value of original designs. In fact, designers such as Karl Lagerfeld and Vera Wang are “knocking themselves off” by designing special collections for lower-end retail stores in an attempt to expand their brand.
In addition to shielding designers from copiers who, because of the Internet, instantly rob designers of their original works, this law, if enacted, will also affect the Internet sphere by limiting the availability of counterfeit goods. This legislation, which has bipartisan support, was introduced in the Senate in August and should be monitored by the industry over the coming months.