Put yourself in the shoes of an emerging designer, launching a collection that will hopefully resonate with consumers, and be the “big break.” Now switch gears, and imagine yourself in charge of an established, iconic fashion company. A company that spends a large portion of its budget to lure and retain the best creative talent, hoping to produce avant-garde fashion pieces.
This season, you believe you have a visionary collection that is going to resonate with consumers and will see the big spend on all that talent pay off (literally). In both situations, the ability of others to produce copies quickly would undermine your ability to capture the consumer and establish or further hype around your brand — and of course, would cut into your profit.
The ability to manufacture clothing quickly and cheaply, referred to as “fast fashion,” leaves both of our hypothetical individuals vulnerable to copycats who pick up on consumer interest in a new collection and turnaround to sell the same look (often at a significantly discounted price).
Is there any way to protect creative garments and accessories from these copycats? The answer, unfortunately, is that there are not a lot of legal avenues available to protect from copying ideas when the ideas take the form of clothing or accessories. In the creative world, writers, artists and filmmakers, to name a few, own the rights to their works by being the creator of those works. Fashion design is not provided the same creative protection. Thus, creatives in fashion have to, for lack of a better word, be creative when it comes to protecting their brand.
In the U.S., intellectual property rights include patent, copyright and trademark (including trade secret). Very generally, patents protect inventions, copyrights protect literary or artistic works, and trademarks protect a brand in the marketplace. So while both patents and copyrights have the aim of driving innovation and creativity, the goal of a trademark is to prevent confusion as to who is the source selling a good or service. From these descriptors, it would seem that patent and copyright laws are best suited as the vehicles to protect fashion. As we will see, however, trademarks often provide some of the strongest protection for fashion.
A long time ago (and certainly before fast fashion was a thing) the U.S. Copyright Office determined that clothing is functional. The rationale is that clothing provides a function by being worn. By making this determination, clothing is set apart from paintings, novels and films, and is not subject to copyright protection. Many in the fashion industry protest this legal setup.
One prominent voice on the matter is Diane von Furstenberg, who as president of the Council of Fashion Designers of America worked at the legislative level for increased copyright protection for fashion items. However, to date, the laws have not broadened and copyright protection remains fairly narrow. One such narrow form of copyright protection available is for a two-dimensional pattern on fabric, as a pattern on fabric is likened to paint on a canvas, and is not deemed functional.
Now, patents protect function and also serve to protect innovation. So are patents the answer to protection for fashion?
Well, to obtain a utility patent, an idea has to both be functional and new. So while a utility patent may be a good option to protect high-performance fabrics (think a wetsuit or a space suit) or a novel type of clasp, an aesthetically pleasing placement of a ruffle on a hemline is not a good candidate for a utility patent. Now a different type of patent, a design patent, protects the ornamental design of a functional item. Design patents appeared poised to take on a large role in the protection of fashion design, with design patent filings on the rise for fashion items.
Then the recent and prominent Apple vs. Samsung Supreme Court case changed the damages inquiry, providing for potentially less damages depending on the scope of the design patent with respect to the product sold. Now, if a design patent covers only a part of an article of clothing, it can be hard to determine how one will allocate the profits that stem from that part of the article. So a design patent’s worth at warding off infringers has been called into question. Further, because a design patent can take north of six months to obtain in the first place, in the fast-paced and ever-changing world of fashion, a design patent is not always a practical protection vehicle.
Thus, although the purpose of trademark protection is not to protect creativity in the manner of patents or copyrights, trademark protection remains one of the biggest tools in a designer’s arsenal.
While protecting an entire article of clothing via a trademark is out of the question, aspects of the clothing can be protected. Logos, such as the Lacoste alligator, the Nike swoosh, Gucci’s interlocking G’s and the Ralph Lauren polo pony are protectable via trademark law. Because the value of these logos really comes down to consumer recognition of a brand, trademarks are typically most valuable for famous, well-recognized logos. So when the established, iconic fashion company finds itself copied by a knock-off trying to capitalize on their logo/brand association, the company can go after the knock-off using trademark law. However, an emerging brand with a garment or bag that becomes popular may find that a savvy copier has copied the item and left out their logo, as the logo is not yet of value to the consumer.
There is another aspect of trademark law that can be used to protect fashion: trade dress. Trade dress can protect product packaging or product configuration. Packaging is easy enough to understand. A distinctive package like the McDonald’s Happy Meal box, curved Coca-Cola bottle, and ovoid container for Hanes L’eggs pantyhose, are good examples of trade dress. If packaging receives enough recognition in the marketplace, then it can be deemed part of the brand and qualify for trade dress. Product configuration trade dress gets more interesting: it covers an aspect of the product itself — and fashion has capitalized on this form of protection. Take the Christian Louboutin shoe: the red backing has become so recognizable that consumers see the sole and associate the shoe with Louboutin.
So, a brand that establishes consumer recognition for an aspect of its fashion product can submit that aspect for trade dress product configuration protection. Iconic handbags have been able to obtain product configuration protection for woven patterns on the handbag, like Bottega Veneta, as well as for the overall look of the handbag, like the Hermès Birkin bag. Because it usually takes time to build up consumer recognition in the marketplace to be eligible for trade dress protection, again, this is a type of protection more often available to an established brand.
Trademark protection can help fashion obtain some protection when copyright or patent law fails to protect on the creative front. However, limits remain, and as a result, copiers (like the fast-fashion machine) can still take advantage of creative minds in the fashion industry. Although emerging designers are likely left with fewer resources for protection, a new designer can team up with an intellectual property lawyer to develop both short-term and long-term plans to best position their brand and make the most of copyright, patent, and trademark laws.
Nicole Reifman is a partner at McDonnell Boehnen Hulbert & Berghoff LLP and serves as chair of the firm’s Trademark, Unfair Competition and Advertising Law Practice Group.