This article was co-authored with Joshua Rudawitz, an associate in the Intellectual Property Department at Nutter.
Fashion designers face a unique set of challenges in protecting their intellectual property. Though a fanciful garment may be the result of a single creative process by the designer, a designer or manufacturer may need to use multiple forms of intellectual property to fully protect the fashion design of that garment. We’ve previously discussed how copyright law has been an awkward, ineffective tool for protecting fashion design, rendering their fashion design essentially unprotected. The law has now shifted in a way that makes copyright law more useful for fashion article designers and manufacturers, however. A recent U.S. Supreme Court decision has clarified and expanded how copyright law can be leveraged to protect certain aspects of fashion design. This article discusses this recent copyright law development and briefly summarizes the various legal forms of intellectual property protection for the fashion industry.
How Copyright Law Recognizes Fabric Patterns and Surface Decorations in Fashion Design
The U.S. Copyright Act of 1976 provides protection for “the design of a useful article” in circumstances where designs “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Historically, it has been difficult to protect clothing designs, including patterns, under United States copyright law because courts have considered clothing designs as part of the utilitarian purpose of clothing. We wear clothes in part because they make us look good, and thus clothing design aesthetic is part of the utility of the clothing, or so the prevailing argument has gone.
The recent U.S. Supreme Court holding in Star Athletica, LLC v. Varsity Brands represents a step toward making it easier for fashion designers to protect certain aspects of their clothing designs against knock-offs. The Supreme Court interpreted the Copyright Act wording quoted above and in doing so, resolved conflicting legal tests adopted by various regional federal appeals courts. The Court established a relatively simple test for protecting the designs of clothing articles. Namely, a clothing design is protected under copyright law if it can be imagined as a two-dimensional work of art appearing independently from the clothing item as a pictorial or sculptural work that itself would qualify for copyright protection. In other words, if a clothing design element can be imagined as an expressive work of textile art that you could hang on your wall or a sculpture, then it is protected.
The legal test is simple, but whether this test will provide the robust legal leverage desired by clothing designers in confronting knock-off clothing manufacturers will depend largely upon lower courts’ application of the standard. The new interpretation of the Copyright Act will protect many patterns and sculpture-like adornments, but it has not opened the door to protecting more functional aspects of fashion design under copyright law, e.g., the cut or venting of the garment. While there will be elements more obviously protectable under copyright law, on the one hand, and then those clearly utilitarian and not protected, on the other, much fashion design will fall in between those extremes. Fashion designers, and the intellectual property lawyers who advise them will be awaiting the more subjective “in between” decisions with great interest.
In the meantime, where knock-off competition is a concern, fashion designers should attempt to incorporate patterns within clothing designs that can be imagined as tapestries or wall hangings or adornments that can be envisioned as sculptures. Fashion designers must accept that standard, common or “stock” design elements in their designs cannot be protected – the law will continue to disregard them for purposes of copyright infringement analysis. For example, a “varsity letter jacket” design with wool torso material, leather sleeves, and with matching multi-colored collar, waistband, and cuffs is a common, stock design straight out of central casting in which one would not successfully assert trade dress rights.
Trademark Law and Trade Dress: Logos and Other Indications of Source
Trademark law provides protection for logos and “trade dress” in addition to words and wording combinations. Just like word trademarks, logos and trade dress are marketplace indicators that allow consumers to confidently identify the source of products they encounter. Allowing a company to keep others from subsequently using a protectable logo or trade dress element that is likely to cause consumer confusion both protects consumers from confusion and protects the company’s brand equity that hinges on the logo or trade dress.
We all intuitively understand what logos are. With the exception of only the least imaginative logos, they are considered inherently protectable. Trademark registration is strongly recommended to enhance the available protection. In the interests of avoiding a “merely ornamental” refusal during the registration process, however, we recommend that clothing manufacturers and retailers include a logo in a more traditional trademark manner, e.g., on clothing labels and/or on “hang tags,” in addition to incorporating the logo as part of the garment design itself. It is difficult to characterize the appearance of a logo graphic on the clothing itself as having source-identifying significance, but use of the logo on clothing, tags, and labels likely will avoid a “merely ornamental”/failure to function as a trademark objection.
The basis for trade dress protection as it applies to fashion design, as opposed to logos associated with clothing, is more conceptually difficult to grasp and define, not just for business people, but for attorneys and judges. Trade dress protects the aspects of the appearance of a product that consumers would perceive as indicating source. Trade dress elements must be non-functional and distinctive as threshold requirements for legal protection. For example, a hood on a sweatshirt is functional and not in itself protectable, but a design pattern on a hood might be protectable. Trade dress protection generally does not extend to the overall design of a garment because usually it is difficult to characterize fashion design as having source-identifying significance.
There are two important trademark law U.S. Supreme Court decisions in particular that helped define what qualifies as protectable trade dress. In 1995, the Court handed down a decision relating to the protection of color as trade dress in its Qualitex Co. v. Jacobson Products Co. decision. Qualitex Co. was attempting to assert trade dress rights in a shade of green for its dry cleaning press pads. The Court ruled that color is not inherently distinctive and immediately protectable, but that instead, it is only protectable to the extent that it can be demonstrated to have been used over time on a product to such a degree that it has come to be viewed by consumers as a source indicator. An example of a protection of a color in the fashion world is Tiffany & Co.’s “robin’s egg blue” colored packaging. The trademark law term of art for having achieved that source-identifying status is “secondary meaning”. Secondary meaning can be proven indirectly through the submission of evidence of duration of use, unit and revenue sales, and advertising expenditure. The best, more direct way to prove that trade dress has acquired secondary meaning is through compiling consumer survey evidence, but that is an expensive proposition.
Then, in 2000, the Supreme Court published a ruling relating to non-color trade dress that partially adopted the Qualitex approach, and this time the case specifically involved clothing designs. In Wal-mart Stores, Inc. v. Samara Brothers, Inc., the Court made distinctions between two categories of potentially protectable trade dress: “product packaging”-type trade dress and “product configuration”-type trade dress. Designs of clothing products fall into the latter category. Under the Court’s framework for analysis, product packaging-type trade dress, for example, the graphical lay-out and color scheme of a milk carton, immediately protectable, but product configuration-type trade dress, for example, the shape of a handbag, first requires evidence of secondary meaning before enforceable rights will be recognized. Aesthetically appealing product design elements are capable of having a source-identifying function for consumers but do not automatically serve that function. In applying this newly-created framework to the clothing design at issue, the Court took the position that Samara Bros seersucker children’s clothing design should be treated as possibly including elements of product configuration-type trade dress subject to proof of secondary meaning, and remanded the case back to the lower court for consideration with that standard in mind.
Product configuration trade dress is not limited to clothing patterns but also applies to other elements, such as distinctive straps or buckles. One example of protected non-pattern product configuration trade dress is the rectangular design attached to the flap of Hermѐs BIRKIN handbags. If this type of protection is sought, it can be advisable to call out specific product aspects in advertisements, e.g., “Look for the green strap.” When proving trade dress rights in clothing elements, it is helpful to point to a history of having highlighted the elements in advertisements.
A practical problem associated with establishing secondary meaning for clothing designs is that design pirates often are so quick to sell competing knock-offs that the original designer does not have time to develop secondary meaning. To address that problem, clothing designers should consider design patent protection, discussed below, as an additional basis for protection.
Design Patent: Ornamental Designs of Functional Items
Design patent law provides protection for the ornamental design elements of a functional product. This can include design elements of clothing, product packaging, or even the shape of a device. The design element must be an ornamentation applied to a functional product, which is inseparable from that product. In general, design patents protect the configuration or shape of the functional product – in other words, the way the “thing” looks. However, if the look of the design is dictated by the function that it performs, then the design is said to lack ornamentally and cannot receive design patent protection. If a design aspect is functional then a “utility patent” (discussed in the final section of this article below) is the only way to protect the design aspect.
The process of obtaining a design patent typically is more expensive and time-consuming than copyright registration or trademark registration. A design patent, in general, will include a series of figures, pictures, or drawings illustrating the design for which protection is being sought, a description of the features, and a single claim that defines what the applicant is looking to patent. The claim will generally reference the figures and description that are present in the application. The Patent and Trademark Office will review the application for compliance with formalities and ensure that the design is “new.”
When a design patent is granted, the patent affords the patent holder the right to prevent others from making, using, selling, or otherwise copying product that contain those designs. As a result, a unique look of a product, including a clothing product or handbag, can be protected for a period of 14 years. What if a fashion designer not only designs an aesthetically innovative garment, but also one that includes advances in the function of the garment? Then additionally it might be prudent to consider filing a utility patent, discussed below.
A utility patent, like a design patent, affords the holder the right to prevent others from making, using, selling, or otherwise copying what the patent protects. If the function of a specific aspect of a clothing or fashion article is what truly sets it apart from what is already on the market, then a utility patent can provide a mechanism to protect the functional aspects of that product element. Functional aspects of a fashion article can include fasteners, developments in materials, developments in manufacturing processes, and elements that enhance the performance of the person wearing the garment. A classic example is Velcro® fasteners. It was the function – not the ornamental design – that was protectable. This is because the appearance of the hooks and loops is not ornamental, but dictates the function of the fastener. Thus, a utility patent, and not a design patent, was appropriate. Moreover, copyright protection for the hooks would not be appropriate because they are inseparable from their utilitarian function. We cannot imagine them as separate works of art (applying the new standard). Trademark protection was not available because the hooks are functional.
Another technological area where the function of a garment would be best protected under patent law is in new energy-generating fabrics. As a person wears and moves in a garment made from such a fabric, energy is generated and can be used to recharge devices like cell phones. The look of such a fabric can be protected using the other legal mechanisms described above, but the functional aspects cannot.
The process of obtaining a utility patent can be time intensive and expensive, but they can provide important offensive and defensive protection in the marketplace. That is not to say that fashion designers should shy away from considering utility patents, but they should be the result of a fully informed cost-benefit decision.
The takeaway for fashion designers is that there are numerous avenues to protect various aspects of a product. While the above discussion is not exhaustive, it should give designers a perspective of the many options of intellectual property protection for the fashion industry. As with any legal issue, each product will have unique protectable design features and functions – and will require different forms of protection. The form of protection a fashion designer may seek can depend on a variety of factors including the time to market, the available budget, and type of protection needed. Moreover, the use of any intellectual property to legally protect products can be a costly endeavor with no guarantees of success. It is recommended that fashion designers seek advice from trusted fashion design counsel experienced in trade dress and design patent as to how to best protect products when bringing them to market.
Patrick J. Concannon is a partner in Nutter’s Intellectual Property and Corporate and Transactions Departments, with over 20 years experience devoted to helping businesses establish and protect their brands, including more than 15 years as a practicing trademark attorney. He focuses his practice on U.S. and international trademark clearance, trademark portfolio management and protection and trademark and copyright licensing.